Ex Parte Rizika

Patent Trial and Appeal Board

Nov 30, 2017

11747355 (P.T.A.B. Nov. 30, 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.
11/747,355 05/11/2007 Daniel J. Rizika 103659-9 4350
21125 7590 12/04/2017
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
docket @ nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte DANIEL J. RIZIKA
Appeal 2016-002471
Application 11/747,355
Technology Center 2800
Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and JEFFREY R.
SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 26—37, 39, 41, 45^49, 54—63, 65, 67,
71-75, 80, 110-121, 123, 125, 129-133, and 138. Claims 76-79 and 134-
137 have been withdrawn from consideration. Claims 26, 56, and 110 are
Appeal 2016-002471
Application 11/747,355
independent claims. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
Claim 26 is illustrative of Appellant’s subject matter on appeal and is
set forth below (with text in bold for emphasis):
26. A transfer system for uniformly supporting a freshly printed sheet
material as the freshly printed sheet material is conveyed from a first print
station to a next station without marking, the transfer system comprising:
a transfer cylinder having an outer face configured to convey a freshly
printed sheet from
a first printing station to a next printing station, the cylinder being generally
C-shaped and having a longitudinal gap in the outer face to provide access to
inner surfaces of the cylinder for attaching an anti-marking covering; and
an anti-marking covering disposed on the outer surface of the transfer
cylinder, the anti-marking covering comprising:
an outer flexible substrate layer having a textured surface
protruding from a first side for supporting the freshly printed sheet
material, and a back side opposed to the first side;
an inner flexible material that is resilient to compressive forces,
the inner flexible material having an outer surface disposed in contact
with the back side of the outer flexible substrate layer and an inner
surface disposed on the outer surface of the transfer cylinder; and
a stiffening strip mechanically fastened by at least one eyelet
to the outer flexible substrate layer on a longitudinal edge portion
to form a stiff longitudinal edge for the anti-marking covering, the
eyelet being a mechanical fixture having a barrel and a flange;
wherein the anti-marking covering is attached to an inner surface of
the transfer cylinder along its stiff longitudinal edge.
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Application 11/747,355
The Examiner relies on the following prior art references as evidence
of unpatentability:
Heinemann et al. US 4,537,129
(hereafter “Heinemann”)
Philpot US 5,088,408
Rizika US 6,811,863 B2
Burton US Pat. Pub. 2005/0061181 Al
DeMoore et al. WO 97/42031
(hereafter “DeMoore”)
Aug. 27, 1985
Feb. 18, 1992
Nov. 2, 2004
March 24, 2005
Nov. 13, 1997
THE REJECTIONS
1. Claims 26, 27, 29, 31-37, 39, 41, 45^19, 54, 55, 110-114, 117-121,
123, 125, 129-133, and 138 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Rizika in view of Burton and Philpot.
2. Claims 28 and 116 are rejected under pre-AI A 35 U.S.C. §103 (a) as
being unpatentable over Rizika, Burton, and Philpot as applied to claims 26
and 110 above, and further in view of DeMoore.
3. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Rizika, Burton, and Philpot as applied to claim 26 above,
and further in view of Heinemann and DeMoore.
4. Claims 56—63, 65, 67, 71—75 and 80 are rejected under pre-AIA 35
U.S.C. §103 (a) as being unpatentable over Rizika in view of Burton, Philpot,
Heinemann, and DeMoore.
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Application 11/747,355
5. Claim 115 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Rizika, Burton, and Philpot as applied to claim 110 above,
and further in view of Heinemann.
ANALYSIS
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2013). Based
upon Appellant’s substantive arguments, we select claim 26 (representative
of the grouping involving claims 26, 30, and 110), claim 32, claim 39
(representative of the grouping involving claims 39, 65, and 123), claim 41
(representative of the grouping involving claims 41, 67, and 125), and
method claims 56 and 57.
Hence, we consider claims 26, 32, 39, 41, 56, and 57 in this appeal.
We add that Appellant does not separately argue claims 28 and 116 (the
claims rejected in Rejection 2), and therefore Rejection 2 is affirmed for the
same reasons given below with regard to Rejection 1, claim 26. Appellant
also does not separately argue claim 30 (the sole claim rejected in Rejection
3), and therefore Rejection 3 is likewise affirmed for the same reasons given
below with regard to Rejection 1, claim 26.
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from. We add the following for emphasis.
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Application 11/747,355
Rejection 1
We consider claims 26, 32, 39, and 41 in Rejection 1.
Claim 26
Appellant points out that the Rizika patent (primary reference) is
commonly owned with the present application and shares the first named
inventor. Appeal Br. 4. Appellant states that Rizika is the background
against which the present application was made. Appellant states that Rizika
introduces the “two plus” layer anti-marking sheet for printing press
transfer cylinders, and that the present application advances the art by
developing new mechanisms for attaching these “two plus” layer systems to
transfer cylinders.
Appellant then refers to various teachings of Rizika that pertain to the
attachment of the anti-marking sheet to a transfer cylinder. Rizika, cols.
11—12. Appeal Br. 4—5. Appellant submits, however, that there is little to
no discussion in Rizika about how, where, and why to attach the fixturing to
the anti-marking sheet, and what the challenges are in doing so, whereas the
present application does so, and Appellant refers to pages 18—19 of the
Specification in this regard. Appeal Br. 5—6.
Appellant states that as a result of extensive testing against these
concerns, they developed the present mechanical fastening of a stiffening
strip to the outer flexible substrate layer along a longitudinal edge as recited
in each independent claim. Appellant submits that this configuration is not
suggested by Rizika, and that Rizika does not disclose mechanically
fastening the stiffening strip to the outer flexible substrate layer using an
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eyelet having a barrel and a flange. Appeal Br. 6. We are unpersuaded by
such argument. As pointed out by the Examiner, contrary to Appellant’s
stated position that Rizika does not disclose mechanically fastening a
stiffening strip to an outer flexible substrate layer, the Examiner reiterates
the findings that Rizika teaches a mechanical attachment, that is a
stiffening strip (a steel strip; column 9, first |), attached to an outer flexible
substrate (flexible substrate comprising 100, 105, and 110, that is a part of
the anti-marking sheet or jacket of 199 as taught in column 10,11. 5—25).
Ans. 2. The Examiner also refers to col. 8,1. 66—col. 9,1. 9 of Rizika for
teaching attachment of the steel strip to the longitudinal edge of the anti­
marking sheet or jacket 199, which includes flexible substrate 100, 105, and
110. Ans. 2-3.
The Examiner further states that Rizika teaches the attachment to be
with rivets (col. 8,11. 66—col, 9,1. 9). The Examiner states that Appellant’s
Specification makes no distinction between a rivet and an eyelet (e.g., p. 20,
11. 1—11 and p. 26,11. 23—26 of the Specification). The Examiner states that
eyelets and rivets have the same function in the Specification and the prior
art. Further, eyelets and rivets appear to be the same thing as far as the
instant application is concerned as they are both indicated to be numeral 340
in figure 2D. Ans. 3.
Appellant replies that the Examiner is incorrect in stating that the
Specification makes no distinction between a rivet and an eyelet. Reply Br.
2. Appellant points to certain excerpts from the Specification in support
thereof. Reply Br. 2—3.
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While we agree with Appellant that the Specification indicates a
preference in using eyelets (1 [0137]), Appellant’s aforementioned
arguments do not fully address the merits of the rejection which is that it is
the Examiner’s position that it is the combination of Rizika in view of
Burton that teaches that eyelets or rivets function similarly by mechanically
fastening a stiffening strip to a sheet. As stated on page 4 of the Final Office
Action, the Examiner relies upon Burton for teaching that eyelets are taught
to be known alternatives to rivets for securing attachments between a clip
and a print carrier sheet.
With regard to the Examiner’s reliance upon Burton, Appellant
submits that Burton cannot properly be combined with Rizika for the reasons
presented on pages 7—8 of the Appeal Brief. We are unpersuaded by such
argument for the reasons provided by the Examiner, beginning on page 3 of
the Answer. Therein, the Examiner states that Burton concerns attachment
of a stiffening strip (10) to the edge of a covering (24) for a print cylinder
(figure 15), and as such, is considered to be in the field of Appellant’s
endeavor and reasonably pertinent to the particular problem with which
Appellant was concerned. The Examiner also states that Burton is used to
teach that rivets and eyelets are both well-known attachment mechanisms for
covering attachments for printing cylinder coverings. Ans. 6. The Examiner
reiterates that it is considered that Rizika teaches all of the limitations of the
claimed invention, including stainless steel strips and anti-marking sheets,
except the use of eyelets instead of rivets. Id. The Examiner states that
Burton teaches that eyelets and rivets are well-known alternatives
for mechanically attaching a stiffening strip to a printing cylinder covering
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(1 [0028] of Burton teaches attachment by rivet and alternatively the edge
clip may be augmented to accommodate fasteners such as eyelets). Ans. 6.
Appellant also argues, on page 9 of the Appeal Brief, that rather than
replacing rivets with eyelets, “Burton suggests adding ‘additional eyelets’ to
the existing fastening means.” Appellant further argues that there is no basis
for the notion that “at least one eyelet" “allows the strip to be attached to the
anti-marking covering with additional security.” Appellant also argues that
no reference recognizes the problem of providing pull out strength or the
dimensions in which the fastener should preferably reside. Appeal Br. 9.
We are unpersuaded by such arguments for the reasons provided by
the Examiner in response as set forth on pages 4—6 of the Answer. We add
that use of known materials for their known purpose is evidence of
obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Appellant next argues that the grommet of Philpot would not be used
with Rizika for the reasons presented on pages 9—11 of the Appel Brief. We
essentially agree with the Examiner’s stated response made on pages 6—7 of
the Answer. Therein, the Examiner explains that Philpot is relied upon for
teaching grommets as being capable of fastening one item to another in
Figures 4-6, and for teaching that eyelets have barrels and flanges, whereas
Rizika and Burton are relied on in combination to teach the layers, and
layers being attached by eyelets.
Appellant also argues that a grommet is not an eyelet and that they
have different structures and perform different functions for the reasons
presented on page 10 of the Appeal Brief. It is the Examiner’s position that
a grommet is another name for an eyelet, and the Examiner refers to a
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definition of “eyelet” as being a metal ring for lining a small hole. Ans. 6.
We are not persuaded by Appellant’s argument on this point. The record
indicates that both an eyelet and a grommet are used to reinforce a hole.
Ans. 6.
Appellant argues that no person of ordinary skill would use the
grommet of Philpot to mechanically fasten a stiffening strip to a longitudinal
edge of the outer flexible substrate layer of Rizika, and that the statement in
Burton that someone might use an eyelet as an additional fastener does not
suggest that a person of ordinary skill should adopt the grommet of Philpot
for this purpose. Appeal Br. 10.
We agree with the Examiner’s response made on page 7 of the
Answer. Therein, the Examiner states that Rizika teaches fastening a
stiffening strip to a longitudinal edge of the outer flexible substrate with
rivets (col. 8,1. 66—col. 9,1. 9). The Examiner states that Burton teaches
that eyelets and rivets are well-known, and known alternatives, for
mechanically attaching a stiffening strip to a printing cylinder covering.
Philpot is simply relied on to teach that eyelets have barrels and flanges.
Ans. 7.
Appellant next argues that the grommet of Philpot is not suitable for
the structural use recited in the claims because it is too thick, and that one
would not look to Philpot when concerned with the tight confines of the
present configuration requirements. Appeal Br. 10.
We are unpersuaded by this argument essentially for the reasons
stated by the Examiner on pages 8—9 of the Answer. We add that in
assessing the obviousness of a claim to a combination of prior art elements,
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the question to be asked is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions”. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417. In the
instant case, Appellant has not persuasively argued that the size or
proportion (or pull-out strength) is more than a predictable use of prior art
elements according to their established functions.
Claim 32
Claim 32 recites the system of claim 26, wherein the inner surface
of the cylinder includes pins that interlock with holes in the stiffened
longitudinal edge, the holes being distinct from the eyelets.
Appellant argues that Philpot does not teach this aspect of the
invention, but this is not the rejection. Appeal Br. 11. The Examiner
relies upon Rizika for teaching this aspect of the invention. Ans. 9.
Appellant’s arguments are thus unpersuasive because they do not address
squarely the combination of references as applied in the rejection.
Claim 39
Claim 39 recites the system of claim 26, wherein the at least one
eyelet is flattened on each of two opposed sides to minimize total
thickness.
Appellant argues that Philpot merely shows a barrel and flange set up
with no further flattening and that the cross section of the eyelet is rounded
and therefore has not been further flattened. Appeal Br. 11.
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In response, the Examiner states that the claimed subject matter does
not require any particular degree of flattening to have been applied to the
claimed eyelets. The Examiner also states that Philpot teaches each side of
the eyelet is flattened in Figure 1, and that Philpot shows in the figures that
both sides of the eyelet have been flattened in order to contact both sides of
the sheet-like member (14). As such, the Examiner states that it is
considered that Philpot teaches the claimed limitations. We agree and are
thus unpersuaded by Appellant’s arguments.
Claim 41
Claim 41 recites the system of claim 39, wherein “the at least one
eyelet has a flange diameter that is greater than or equal to about 1.5 times a
barrel diameter.”
Appellant argues that the Examiner asserts there is no criticality, and
that the range solves no stated problem, and that the Examiner has not
shown the parameter to be result effective. Appeal Br. 12. Further,
Appellant argues that the range claimed is necessary to guard against pull­
out of the eyelets with the specific layers used in the invention. Id.
In reply, the Examiner states that Philpot teaches the claimed element
of “wherein where in the at least one eyelet has a flange diameter that is
greater than or equal to about 1.5 times a barrel diameter” in Figures 1, 2,
and 7. Ans. 10. The Examiner also states that the eyelet taught by Philpot is
presumed to be enabled (being the subject of a patent document) and
therefore is also considered to be proportioned to prevent pull-out of the
eyelets from the layers to which they are attached. We agree, and reiterate
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that in assessing the obviousness of a claim to a combination of prior art
elements, the question to be asked is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions”. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417. In the
instant case, Appellant has not persuasively argued that the claimed size or
proportion or shape or pull-out strength is more than a predictable use of
prior art elements according to their established functions.
We add that to the extent that Appellant’s arguments address the
references individually, we are unpersuaded by such argument. . In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness “is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Rejection 4
Claim 56
Claim 56 is a method claim and we refer to the Claim Appendix
regarding the recitation of this claim.
Appellant presents arguments pertaining to claim 56 on pages 12—14
of the Appeal Brief. Therein, Appellant argues, inter alia, that Heinemann
is a different application with different requirements for the reasons set forth
on pages 13—14 of the Appeal Brief. We are unpersuaded by such argument
for the reasons set forth on pages 11—12 of the Answer. Therein, the
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Examiner states that Heinemann is applicable because it is concerned with
the problem of reducing the size required for the attachment of a covering to
a printing cylinder (col. 1,1. 54—col. 2,1. 2). The Examiner also states that
Heinemann is directed to an offset printing blanket and associated
attachment. The Examiner explains that Heinemann is used to teach the
inner flexible material being disposed so as to not contact the backside of the
outer flexible substrate along a longitudinal edge portion of the back side in
order to reduce the size of attachment mechanisms. The Examiner states that
the composition of the layers is taught by Rizika. Ans. 11.
Appellant also argues that there is no teaching in any of the references
of the laminating step of the claim. Appeal Br. 14. However, the Examiner
points out that the step of laminating is taught by Rizika (col. 11,11. 8—11).
We agree.
Appellant argues that DeMoore ‘031 is very different from any of the
claims, and that DeMoore ‘031 teaches nothing about the claimed invention
other than that stiffening strips can be used. Appeal Br. 14.
The Examiner disagrees and states that DeMoore ‘031 is applicable
because DeMoore ‘031 is also concerned with the application of stiffening
strips to an anti-marking covering. Ans. 12. The Examiner states that
DeMoore ‘031 is used to teach the application of the stiffening strip against
the back side longitudinal edge, as opposed to the front side, of the
antimarking covering. Id. We agree.
Appellant argues that no reference teaches or suggests a two layer
anti-marking sheet in which the inner layer has been stripped away so that a
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stiffening strip can be mounted directly on the back side of the outer layer.
Appeal Br. 14.
The Examiner states that claim 56 does not require the inner layer to
be stripped away. Ans. 12. However, the Examiner points out that
Heinemann does teach a layer applied across the full width and then stripped
away on the longitudinal edges for clamping purposes (col. 4, lines 3—12).
We agree.
Claim 57
Claim 57 recites the method of claim 56, wherein the inner flexible
layer is laminated across a full width of the outer flexible substrate layer and
the inner flexible layer is then removed from the longitudinal edge portion of
the back side.
Appellant argues that there is no teaching in any of the applied
references of laminating the layers and then removing a portion where a
stiffening strip is then mechanically fastened. Appeal Br. 15.
However, as pointed out by the Examiner, Rizika teaches laminating
the layers together across the whole back surface, and Heinemann teaches
the layer applied across the full width and then stripped away on
the longitudinal edges for clamping purposes (column 4, lines 3-12). Ans.
13.
Reply Brief
We have carefully reviewed Appellant’s Reply Brief. Therein,
Appellant reiterates the positon that eyelets and rivets are different. Reply
Br. 2—3. For the reasons already discussed, supra, we are unpersuaded by
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such argument. Appellant also argues that the Examiner mischaracterizes
some arguments as concerning “nonanalogous art”. Reply Br. 3^4. Aside
from any such characterization, we are in full agreement with the
Examiner’s position in the record that each art reference is applicable in
support of the prima facie case. Finally, Appellant reiterates that claim 41 is
patentable. Reply Br. 4. We are unpersuaded by such argument for the
reasons already discussed supra, with regard to claim 41.
In view of the above, we affirm Rejections 1—5.
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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