Ex Parte Schach

Patent Trial and Appeal Board

May 23, 2018

12762964 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121762,964 04/19/2010
432 7590 05/25/2018
NILS H. LJUNGMAN & AS SOCIA TES
P. 0. BOX 130
GREENSBURG, PA 15601-0130
FIRST NAMED INVENTOR
Martin SCHACH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NHL-HOL-287A 4576
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
nhla@earthlink.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN SCHACH
Appeal2017-006449
Application 12/762,964
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 41--45, 47, 48, 50, 52-54, and 61---69 under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as KHS GmbH. Appeal Br.
3.
2 Appeal is taken from the Final Office Action dated Feb. 18, 2016, as
supplemented by the Advisory Action mailed June 22, 2016.
Appeal2017-006449
Application 12/762,964
STATEMENT OF THE CASE
Claims 62 and 69 are the independent claims on appeal. Claim 62,
reproduced below, is exemplary of the subject matter on appeal.
62. A method of printing bottles or similar containers on an
outer surface thereof using a container printing arrangement, said
method comprising:
moving containers on rotatable container supports of a
container conveyor past at least one printing station, said at least
one printing station comprising: at least one print head, a
conveyor arrangement and transfer elements;
moving, with said conveyor arrangement, said transfer
elements from said at least one print head to a printing region,
which transfer elements each comprise a first resilient layer and
a second resilient layer which supports said first resilient layer;
receiving, from said at least one print head, a print image
onto a transfer surface of said first resilient layer;
moving said container conveyor synchronously with said
conveyor arrangement, at least in the printing region, and thereby
moving each container into contact with corresponding one of
said transfer elements throughout the transfer of a print image
onto each container; and
rotating each of said container supports, and thus each
container supported thereby, to roll each container on and with
said transfer surface, essentially without slip, and thereby
transferring a complete print image onto and about an outer
surface of the container.
THE REJECTIONS
I. Claims 41--44, 52-54, 61---66, 68, and 69 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Aichele (US
6,490,969; issued Dec. 10, 2002) and Hoffmann (US 6,484,632 B2;
issued Nov. 26, 2002).
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Appeal2017-006449
Application 12/762,964
II. Claims 45, 47, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Aichele, Hoffmann, and No (US
5,823,106; issued Oct. 20, 1998).
III. Claim 50 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Aichele, Hoffmann, No, and Dietz (US 6,276,266
Bl; issued Aug. 21, 2001).
IV. Claim 67 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Aichele, Hoffmann, and Berberich (US 4,723,485;
issued Feb. 9, 1988).
ANALYSIS
Rejection I
Regarding claim 62, the Examiner finds, inter alia, that Aichele
discloses "printing on containers," wherein Aichele's hollow bodies 4
correspond to the claimed containers. Final Act. 2; see e.g., Aichele 5:9--10.
The Examiner determines that although Aichele generally discloses the
claimed method steps, Aichele does not disclose transfer elements (i.e.,
decorations faces 19 arranged peripherally on the peripheral face of the
decoration drum 17) having multiple layers, as claimed. Id. at 3. The
Examiner relies on Hoffmann for teaching
a conveyor arrangement 1 comprising a first resilient layer 6
supported on multiple second resilient layers 4, 5, the first
resilient layer 6 having a transfer surface configured to receive a
print image; and the second resilient layer resiliently configured
to compensate dimensional tolerances of a surface engaged by
the conveyor arrangement.
Id. (citing Hoffmann 3 :31-36). The Examiner reasons that it would have
been obvious "to modify the conveyor arrangement of Aichele to include
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Appeal2017-006449
Application 12/762,964
multiple resilient layers," because "Hoffmann suggest[ s] such a modification
is a cost effective means of improving printing quality which also permits
dissipation of tangential force[ s] during rolling contact of the conveyor
arrangement with other surfaces." Id. (citing Hoffmann 1:46-58); see also
Ans. 3 (citing Hoffmann 1:30-42, 1 :46-50). The Examiner concludes that
Hoffmann discloses that these advantages are achieved by a layered transfer
element, notwithstanding additional benefits derived from joint locations
within certain layers. Ans. 3--4.
Appellant argues that "Aichele discloses a method for printing or
decorating sleeves or collapsible tubes" (Appeal Br. 5), which Appellant
submits "are not bottles" (id. at 7). See also Reply Br. 2-5. Appellant
submits that "[t]he question is whether ... collapsible tubes meet the
limitation 'or similar containers' as recited in claim 62." Id. Appellant
further submits that "the term 'container' is indeed limited, albeit to the
extent that collapsible tubes are also excluded."' Id. at 12.
As set forth supra, although the preamble of claim 62 recites "bottles
or similar containers," the body of claim 62 recites "containers," for
example, the method steps comprise "moving containers on rotatable
container supports of a container conveyor past at least one printing
stations," "moving each container into contact with a corresponding ...
transfer element[]," and "rotating each of said container supports, and thus
each container supported thereby." (Emphasis added). Thus, we disagree
with Appellant that Aichele' s hollow bodies 4 must disclose bottles, but
rather, Aichele's hollow bodies 4 must disclose containers. Put another way,
claim 62 reads on a prior art method comprising moving and supporting
containers.
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Appeal2017-006449
Application 12/762,964
The Patent and Trademark Office (''PTO") determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable constn1ction "in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Specification does not provide an express definition for the claim term
"container." An ordinary meaning of the claim term "container," consistent
with the Specification, is "anything that contains or can contain something,
as a carton, box, crate, or can." Container Definition, Dictionary.com,
http://www.dictionary.com/misspelling?term=conatiner&s=t (last visited
May 8, 2008). Aichele's invention "relates to a machine for printing or
otherwise decorating hollow bodies such as sleeves, collapsible tubes, cans
or the like." Aichele 1:6-9; see also Ans. 2-3 (citing Aichele 1:37--40
("Machines of this type ... serve for printing or otherwise decorating hollow
bodies having a round shape such as sleeves collapsible tubes, cans or the
like."). Thus, we are not apprised of error in the Examiner's finding that the
containers recited in claim 62 read on Aichele's hollow bodies 4. 3
Nevertheless, Appellant also argues that the Examiner's combination
is improper "because there is no motivation to combine the references."
3 Notably, an ordinary meaning of the claim term "bottle," consistent with
the Specification, is "a portable container for holding liquids,
characteristically having a neck and mouth and made of glass or plastic."
Bottle Definition, Dictionary.com,
http://www.dictionary.com/browse/bottle?s=t (last visited May 8, 2018).
We determine that Aichele's "hollow bodies such as sleeves, collapsible
tubes, cans or the like" meet the definition of "a portable container for
holding liquids," and therefore, disclose bottles, as well as similar containers
to bottles," as claimed. Aichele 1 :6-8.
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Appeal2017-006449
Application 12/762,964
Appeal Br. 13. In support, Appellant argues that the passage from
Hoffmann relied on by the Examiner as factual support for motivating a
person skilled in the art to modify Aichele to include a transfer element with
multiple layers does not relate to multiple layers, but rather to a joint
location (or seam within the layer(s)). Appeal Br. 14; see also Reply Br. 5-
8.
A preponderance of evidence supports Appellant's argument that
Hoffmann attributes the advantages of cost-effective production and good
printing quality due to dissipation of tangential forces to "a finite layer
having a joint location filled with a compressible material," and not to first
and second resilient layers on transfer elements, as claimed. Hoffmann
1 : 51-5 7. Put another way, the Examiner fails to provide sufficient support
for determining that a person of ordinary skill in the art would apply
Hoffman's multi-layer rubber cylinder sleeve with layers 1, 3, 5, 6, which is
"especially for web-fed rotary offset printing machines" (Hoffmann 1 :45-
4 7) to Aichele' s decoration application drum 1 7 for printing on cylindrical
hollow bodies 4 (Aichele 5:49-51).
Accordingly, we do not sustain the Examiner rejection of independent
claim 62, and claims 63-66, and 68 depending therefrom. Further, the
Examiner relies on the same findings and reasoning for the rejection of
independent claim 69, and therefore, for the same reasons stated supra, we
also do not sustain the Examiner's rejection of independent claim 69 and
claims 41--44 and 52-54. Final Act. 2-5.
Rejection II-IV
The Examiner's reliance on No, Dietz, and Berberich does not cure
the deficiencies in the Examiner's reasoning with respect to independent
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Appeal2017-006449
Application 12/762,964
claims 62 and 69, as discussed supra. Therefore, for the same reasons stated
supra, we also do not sustain the Examiner's rejection of claims 45, 47, 48,
50, and 67, which depend from claims 62 and 69.
DECISION
The Examiner's decision rejecting claims 41--45, 47, 48, 50, 52-54,
and 61---69 is REVERSED.
REVERSED
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