Ex Parte Roland

Board of Patent Appeals and Interferences

Sep 27, 2011

10576031 (B.P.A.I. Sep. 27, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/576,031 04/13/2006 Franck Roland 6003.1049 2192
23280 7590 09/27/2011
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
09/27/2011 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 FRANCK ROLAND
____________

Appeal 2010-000298
Application 10/576,031
Technology Center 2800
______________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000298
Application 10/576,031
2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-23. Appeal Brief. 2. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We affirm.

Exemplary Claim
Exemplary independent claim 11 under appeal reads as follows:
11. An inking roller for an inking unit of an offset printing press
comprising:

a plurality of zones arranged in a direction of an axis of rotation;

at least one ink reservoir in an interior of the inking roller connected
to at least one ink exit in a circumferential surface of the inking roller
in each of the plurality of zones; and

at least one pumping element in each of the plurality of zones in the
interior of the inking unit for conveying ink from the ink reservoir to
the circumferential surface of the inking roller;

the inking roller being an offset printing press inking roller.

Rejections on Appeal
Claims 11-13, 15-16, and 18-23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barrois (U.S. Patent Number 5,282,419;
issued February 1, 1994) and Gandelheidt (GB 2314292 A; issued December
12, 1997). Answer 4-5.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrois, Gandelheidt, and Wagner (U.S. Patent Number
3,738,269; issued June 12, 1973). Answer 6.
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Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrois, Gandelheidt, and Wingo (U.S. Patent Number
5,036,761; issued August 6, 1991). Answer 6-7.

PRINCIPLES OF LAWS
A flexible teachings, suggestions, or motivations (TSM) test remains
the primary guarantor against a non-statutory hindsight analysis. In re
Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir. 2007) (“[A]s the
Supreme Court suggests, a flexible approach to the TSM test prevents
hindsight and focuses on evidence before the time of invention.”).
The TSM test, flexibly applied, merely assures that the obviousness
test proceeds on the basis of evidence-teachings, suggestions (a
tellingly broad term), or motivations (an equally broad term)-that arise
before the time of invention as the statute requires. As KSR requires,
those teachings, suggestions, or motivations need not always be
written references but may be found within the knowledge and
creativity of ordinarily skilled artisans.”

Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed.
Cir. 2008).

Issue on Appeal
Did the Examiner err in rejecting claims 11-23 over the various
35 U.S.C. 103(a) rejections?

ANALYSIS
Claims 11-13, 15, 16, and 18-23
Appellant argues Barrois merely discloses bores that are
conventionally arranged and does not teach an inking roller having “a
plurality of zones arranged in a direction of an axis of rotation” as the
Appeal 2010-000298
Application 10/576,031
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Examiner found. Appeal Brief 5. The Examiner finds that both Barrois and
Gandelheidt teach a plurality of ink bores arranged in a direction of an axis
of rotation, and the Examiner further contends, although neither reference
explicitly designates zones, the claim limitations do not structurally
distinguish the claimed zones from the structures taught in the prior art.
Answer 7. We do not find the Appellant’s arguments to be persuasive and
we agree with the Examiner because the claim limitation does not
distinguish from the prior art as can be seen in Barrois’ Figure 2 and
Gandelheidt’s Figure 3.
Appellant also argues Gandelheidt does not disclose the claimed
pumping element and further, Gandelheidt does not teach an inking roller,
but merely discloses a printing cylinder which directly prints a web. Appeal
Brief 5-6. The Examiner contends that Gandelheidt was not relied upon to
disclose an inking roller; Gandelheidt was relied upon to disclose individual
pumps as an alternative method of supplying ink from an ink reservoir.
Answer 7. The Examiner concludes both Gandelheidt and Barrois are in the
same field of endeavor and further Gandelheidt addresses supplying ink
from a central reservoir to the exterior of a roller and is therefore pertinent to
the problem addressed by Appellant’s invention. Answer 8. We agree with
the Examiner’s findings and conclusion, and we are not persuaded by the
Appellant’s arguments.
The Examiner equates Gandelheidt’s bores 5 to the claimed plurality
of zones. See Answer 4. Appellant argues Gandelheidt’s bores 5 are
arranged radially and along the axis of rotation wherein each bore has a
separate pump. Appeal Brief 6. Appellant concludes, “[t]his is different
from the present invention, as claimed, where the zones are only arranged
along the axis of rotation (not radially) and each separate zone 20 has its
Appeal 2010-000298
Application 10/576,031
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own pump 26 (which serves a plurality of ink exits 12).” Id. We do not find
Appellant’s arguments to be persuasive because they are not commensurate
with the scope of the claims. Appellant admits Gandelheidt’s bores are
arranged along the axis of rotation. Id. In addition, the claim limitation does
not confine the bores or zones to only be arranged along the axis of rotation.
Appellant argues the combination of Barrois and Gandelheidt results
from impermissible hindsight and the Examiner has not articulated any
reason why one of ordinary skill in the art would add the pumping elements
of Gandelheidt’s printing cylinder to the inking roller of Barrois. Appeal
Brief 7. We do not find Appellant’s arguments to be persuasive because the
Examiner has shown that the references are in the same field of endeavor
and has articulated a reason why one of ordinary skill in the art would
combine the two references. See Answer 4, 7, and 8; also see Ortho-McNeil
Pharm., Inc., 520 F.3d at 1364.

Claim 14
Appellant argues the rejection is based upon hindsight reasoning and
it is not understood how the material of Wagner would distribute ink more
evenly as asserted. Appeal Brief 8. Appellant notes the material employed
by “Wagner operates by capillary action that is not ordinarily needed or
necessary with any pump as claimed.” Id. Wagner was cited to disclose an
“ink exit includes a perforated plug.” Answer 6. We do not find the
Appellant’s arguments to be persuasive because whether or not modifying
Barrois and Gandelheidt to include an ink exit with a perforated plug
improves the ink distribution is immaterial to the integration of the plug.

Appeal 2010-000298
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Claim 17
Appellant argues that Wingo discloses a roller for feeding water and
not an inking roller as asserted. Appeal Brief 9. Further, Appellant argues
Wingo does not disclose the claimed “a number of ink exits” and Examiner
has failed to explain how one of ordinary skill in the art would adapt the
water design of Wingo for use in the claimed printer roller. Id. Examiner
finds Wingo teaches an inking roller having a number of ink exits present in
one zone with the ink exits being located in a circumferential direction either
in one angular section of a circumference in an accumulative way or
distributed in a substantially even manner. Answer 6-7.
Examiner asserts Wingo is in the same field of endeavor as printing
ink rollers because dampening or water rollers have similar structures.
Answer 8. Also, Wingo is concerned with the delivery of a fluid from a
central reservoir to the exterior of a roller and is therefore pertinent to the
problem Appellant’s invention attempts to address. Answer 9. We do not
find the Appellant’s arguments to be persuasive because the Examiner has
indicated where Wingo discloses the “number of ink exits” and therefore
Appellant’s argument concerning Wingo’s non-disclosure is not persuasive.
If the Examiner's burden to establish a prima facie case of
unpatentability is met, the burden then shifts to the Appellant to overcome
the prima facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). We agree with the Examiner that one of ordinary skill in
the art would adapt Wingo’s teachings within an inking roller because both
involved the distribution of fluid within a roller or cylindrical element. We
will sustain the Examiner’s rejection for the reasons stated above.
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Application 10/576,031
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DECISION
The Examiner has not erred in rejecting claims 11-23 under the
various 35 U.S.C. §103(a) rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv)(2010).

AFFIRMED

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