Ex Parte Schaede et al

Patent Trial and Appeal Board

May 30, 2017

11578224 (P.T.A.B. May. 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.
11/578,224 11/17/2006 Johannes Georg Schaede 1317.1101101 3721
28075 7590 06/01/2017
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
GEN .USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES GEORG SCHAEDE and
JOHANN EMIL EITEL
Appeal 2015-0057631
Application 11/578,2242
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 19, 21—30, 32, 33, 35, and 37^40. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants’ Specification (“Spec.,” filed Oct. 11,
2006), Appeal Brief (“Appeal Br.,” filed Dec. 2, 2014), and Reply Brief
(“Reply Br.,” filed May. 12, 2015), as well as the Final Office Action
(“Final Action,” mailed Apr. 3, 2014) and Examiner’s Answer (“Answer,”
mailed Mar. 12, 2015).
2 According to Appellants, KBA-Notasys S.A. is the real party in interest.
Appeal Br. 4.
Appeal 2015-005763
Application 11/578,224
We REVERSE.
According to Appellants, the invention “relates to a printing machine
equipped with a laser perforating unit for applying at least one perforation
pattern onto printed sheets.” Spec. 1,11. 3—5. Claims 19 and 31 are the only
independent claims on appeal. Appeal Br., Claims App. We reproduce
claim 19, below, as illustrative of the claims on appeal.
19. A laser perforating system for applying at least one
perforation pattern onto printed sheets, in particular sheets for the
production of securities, banknotes, passports, ID cards and other
valuable documents, comprising
a sheet transport system for transporting the printed sheets
along a transporting path,
a laser perforating unit with at least one laser head
disposed along the transporting path of the sheet transport system
for perforating said printed sheets, and a first aspiration unit to
maintain the printed sheets against an aspiration surface of the
first aspiration unit during perforation by said laser perforating
unit, said aspiration surface being part of the first aspiration unit
and non-movable in the direction of sheet transportation;
said first aspiration unit being disposed between said laser
perforation unit and said transporting path of the sheet transport
system and comprising at least one opening in said aspiration
surface through which is directed said at least one laser head,
wherein the first aspiration unit is distinct from and not a
part of the sheet transport system,
wherein the sheet transport system is able to transport the
sheets in front of the sheet perforation system and relative to the
aspiration surface of the first aspiration unit while the sheets are
being perforated and
wherein the sheet transport system is configured to take
separate, successive sheets from a first pile;
wherein said sheet transport system is a chain gripper
system comprising a plurality of gripper bars each carrying a
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Appeal 2015-005763
Application 11/578,224
plurality of grippers for holding a leading edge of the sheets, the
plurality of grippers of the sheet transport system passing in front
of the aspiration surface.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 19, 22, 24—28, 33, 35, and 37 under
35 U.S.C. § 103(a) as unpatentable based on Buschulte (US 5,797,320, iss.
Aug. 25, 1998), Gawa (US 6,285,000 Bl, iss. Sept. 4, 2001), Schaede
(US 5,640,908, iss. June 24, 1997), and Cobben (US 5,975,583, iss. Nov. 2,
1999).
The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and Limmer
(US 4,149,062, iss. Apr. 10, 1979).
The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and Eveland
(US 5,504,301, iss. Apr. 2, 1996).
The Examiner rejects claims 29 and 30 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and DeRossett
(US 5,298,717, iss. Mar. 29, 1994).
The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and Fischer
(US 4,413,562, iss. Nov. 8, 1983).
The Examiner rejects claims 38 and 40 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and Silverschotz
(US 5,087,805, iss. Feb. 11, 1992).
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Appeal 2015-005763
Application 11/578,224
The Examiner rejects claim 39 under 35 U.S.C. § 103(a) as
unpatentable based on Buschulte, Gawa, Schaede, Cobben, and Kusaka
(US 2001/0054364 Al, pub. Dec. 27, 2001).
ANALYSIS
Independent claim 19 recites, among other recitations, “the sheet
transport system is able to transport the sheets in front of the sheet
perforation system and relative to the aspiration surface of the first aspiration
unit while the sheets are being perforated.” Appeal Br., Claims App.
Appellants argue that no reference teaches such an arrangement, and it
would not have been obvious to combine the references to provide such an
arrangement. See, e.g., Appeal Br. 8—11; see also, e.g., Reply Br. 2—3.
Based on our review of Appellants’ Appeal and Reply Briefs, and the
Examiner’s Final Office Action and Answer, we are persuaded by
Appellants.
In response to Appellants’ arguments in the Appeal Brief, the
Examiner finds that “[t]he combination of Buschulte in view of Gawa fully
discloses this limitation. Buschulte discloses a sheet transportation system
(delivery 2) that is capable of moving the sheets (paper 6) in front of the
sheet perforation system while the sheets are perforated.” Answer 5; see
also Final Action 3. We note, however, that the Examiner does not provide
evidence, such as a citation to Buschulte in either the Answer or the Final
Office Action, or technical reasoning adequately establishing that
Buschulte’s delivery 2 is capable of moving paper 6 during perforation, let
alone while paper 6 is maintained against an aspiration surface during
perforation. For example, although the Final Office Action references
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Application 11/578,224
Buschulte’s column 5, lines 42 and 43, this portion describes only that
processing tools 5 use laser light to perforate paper, without any discussion
that these processing tools 5 perforate paper while the paper is moving. See
Final Action 3, citing Buschulte col. 5,11. 42-43. Thus, we agree with
Appellants that “Buschulte fails to teach that the sheet transportation system
is capable of moving the sheets relative to the aspiration surface while the
sheets are being perforated.” Reply Br. 2; see also Appeal Br. 8, 10.
The Examiner additionally determines that in Gawa “the sheet 1 is
located on a moveable X (6) and Y table (7)[,] which is capable of moving
the sheet 1 during laser processing.” Again, however, the Examiner does not
provide evidence, such a citation to Gawa, or technical reasoning
establishing adequately that Gawa teaches a table that moves during
perforation, let alone a table that moves while a sheet is maintained against
an aspiration surface during perforation. Conversely, as Appellants point
out, “Gawa . . . expressly teaches laser perforation while the sheet is fixed
and subject to suction from the suction unit, and that the X-Y table only
moves the sheet after the laser and aspiration unit are turned off.” Reply Br.
2, citing Gawa col. 8,11. 35—51.
Based on the foregoing, we do not sustain the rejection of independent
claim 19, or the rejections of its dependent claims 21—30 and 32, inasmuch
as the Examiner does not establish that any other reference remedies the
deficiency in claim 19’s rejection. We also do not sustain the rejection of
independent claim 33, which recites a limitation similar to that discussed
above for claim 19, or the rejections of dependent claims 37—40, for reasons
similar to those discussed above for claim 19.
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Application 11/578,224
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 19,
21-30, 32, 33, 35, and 37^40.
REVERSED
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