Ex Parte Schalk

Board of Patent Appeals and Interferences

Mar 29, 2010

10816524 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUBERT SCHALK
____________

Appeal 2009-003768
Application 10/816,524
Technology Center 3700
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Decided: March 29, 2010
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Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hubert Schalk (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1, 2, 8, and 14-19 under 35
U.S.C. § 103(a) as obvious over Schmidt (US 1,471,755, issued Oct. 23,
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1923) in view of Turner (US 4,811,688, issued Mar. 14, 1989); claim 5
under 35 U.S.C. § 103(a) as obvious over Schmidt in view of Turner, and
further in view of Ryser (US 6,527,029 B1, issued Mar. 4, 2003); and claims
10-13 under 35 U.S.C. § 103(a) as obvious over Schmidt in view of Turner,
and further in view of Petrzelka (US 5,118,214, issued Jun. 2, 1992). We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a folding device with a folding drum
for producing the second longitudinal fold in products of a rotary press.
Spec. 2, para. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A folding device for producing a second longitudinal fold
in products of a rotary press, comprising:
a folding drum comprising two opposing side walls and a
carrier connected to the folding drum at a location between said
side walls, wherein said carrier has a small material thickness in
a longitudinal direction of said folding device and a large area
extending approximately over an entire cross section of an
interior of said folding drum in a transverse direction of said
folding device;
a folding-blade shaft having two ends, each of said two
ends of said folding-blade shaft being rotatably mounted in a
respective one of said sides walls in said folding drum, said
folding-blade shaft having at least two folding-blade carriers for
holding folding blades which are spaced apart from one
another in a region proximate said carrier by a distance
smaller than 10 millimeters;
a pair of bearings arranged in said side walls of said
folding drum, said ends of said folding-blade shaft being
mounted respectively in said side walls by said pair of bearings;
at least one further bearing arranged in said carrier,
wherein said folding-blade shaft is further rotatably supported
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in said carrier by said at least one further bearing between said
ends of said folding-blade shaft,
wherein said pair of bearings and said at least one further
bearing comprise self-aligning roller bearings.

Emphasis added.

The Rejections
The Examiner acknowledges that none of the prior art discloses,
teaches, or suggests spacing the folding blades apart from one another by a
distance smaller than 10 millimeters as set forth in claims 1 and 14.
Nonetheless, the Examiner concludes that:
At the time the invention was made, it would have
been an obvious matter of design choice to a
person of ordinary skill in the art to space the
folding blades apart by 10 millimeters to improve
the fold quality or to accommodate the change in
material characteristics or change in working
conditions because since it has been held that
where the general conditions of a claim are
disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in
the art. In re Aller, 105 USPQ 233.1
Ans. 4.
Contentions
Appellant contends that the Examiner’s reliance on Aller is
inappropriate because Aller “has nothing to do with determining the
patentability of an apparatus claim.” Br. 6.

1 220 F.2d 454, 456 (CCPA 1955).
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OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in concluding it would have been obvious to
modify Schmidt’s spacing to a distance smaller than 10 millimeters because
Schmidt discloses the general conditions of the claims? In particular, did the
Examiner correctly apply the Aller principle?
Analysis
The fundamental error of the Examiner lies in a misapplication of the
holding in Aller.
In Aller, the claimed invention was a process for the production of
phenol. Aller’s claimed process was identical with that of the prior art,
except that Aller’s claims specified lower temperatures and higher sulphuric
acid concentrations than are shown in the prior art reference to Hock and
Lang. Aller, 220 F.2d 455. The court held “where the general conditions of
a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” Aller, 220 F.2d at
456 (citations omitted). In Aller, the court’s conclusion of obviousness was
based on the findings that (1) the prior art disclosed generally the claimed
process to produce phenol and described one experiment and its results, and
(2) any chemist reading the article could logically assume that higher yields
might be obtainable, and by experimentally varying the conditions of
temperature and acidity, could find the most productive conditions. Id. at
458.
Aller thus established two conditions for a conclusion of obviousness:
one, the general conditions of the claim must be disclosed in the prior art,
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and two, discovery of the optimum or workable range must be a matter of
routine experimentation. We find Aller inapplicable to the facts of this case
because neither of these two conditions is met.
First, the general conditions of the claim limitation that require the
folding blades to be spaced apart by a distance smaller than 10 millimeters is
not disclosed in the prior art. Schmidt fails to disclose any particular range
of distance and the Examiner does not rely on Turner, Ryser, or Petrzelka to
cure that deficiency. In contrast with Aller, where the elements were present
in the prior art and differed only in quantities from the claimed process, here
it is speculation and conjecture to find that the spacing is merely a difference
in degree rather than in kind. See Aller, 220 F.2d at 456.
Second, even if Schmidt could be seen as disclosing the general
conditions of the folding blades being spaced apart by a distance smaller
than 10 millimeters, the holding in Aller does not apply because the
Examiner has failed to sufficiently explain how any proposed modification
of Schmidt’s folding blades to be spaced apart by a distance smaller than 10
millimeters would be a matter of routine experimentation for a person
having ordinary skill in the art. See Aller, 220 F.2d at 456. The Examiner
reasons that it is a matter of design choice to space apart the folding blades
by 10 millimeters “to improve the fold quality or to accommodate the
change in material characteristics or change in working conditions” (see
Ans. 4) because “it has been held that … discovering the optimum or
workable ranges involves only routine skill in the art” (see Ans. 4 (emphasis
added) (citing Aller)). However, Aller speaks of routine experimentation
rather than routine skill, and the Examiner does not appear to have made any
finding that varying the blade spacing would have been the subject of
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routine experimentation nor adequately articulated why selecting the
claimed spacing would have been an obvious design choice. See Ans. 4, 7-
8.

CONCLUSION
Accordingly, the Examiner erred in applying the principle set forth in
Aller to the facts of this case.

DECISION
The Examiner’s decision to reject claims 1, 2, 5, 8, and 10-19 is
reversed.

REVERSED

mls

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