11121106 (B.P.A.I. Jan. 25, 2011)

Ex Parte Schupbach

Board of Patent Appeals and InterferencesJan 25, 2011

11121106 (B.P.A.I. Jan. 25, 2011)

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. 11/121,106 05/04/2005 Andre Schupbach 40424-215534 2554 26694 7590 01/26/2011 VENABLE LLP P.O. BOX 34385 WASHINGTON, DC 20043-9998 EXAMINER NICHOLSON III, LESLIE AUGUST ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 01/26/2011 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 ANDRE SCHUPBACH ____________ Appeal 2009-008838 Application 11/121,106 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHAEL W. O’NEILL and KEN B. BARRETT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008838 Application 11/121,106 2 STATEMENT OF THE CASE Andre Schupbach (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-6 and 8-14, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted in connection with this appeal on January 19, 2011, with Steven J. Schwarz, Esq., appearing on behalf of Appellant. We REVERSE. THE INVENTION Appellant’s invention is directed to an apparatus for wire-stitching print products. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for wire-stitching print products compiled from gathered signatures and for trimming open edges of the print products, said apparatus comprising: a first gathering and wire-stitching machine including a first wire-stitching unit; a first cutter installed downstream from the first gathering and wire-stitching machine; a second gathering and wire-stitching machine selectively connected in-line with the first gathering and wire-stitching machine and including a second wire-stitching unit, for operation in tandem with the first gathering and wire-stitching machine; Appeal 2009-008838 Application 11/121,106 3 a second cutter installed downstream from the second gathering and wire-stitching machine; a transfer element positioned between the first and second gathering and wire-stitching machines for transferring print products or partial print products from the first gathering and wire-stitching machine to the second gathering and wire-stitching machine during the tandem operation; and a drive motor operatively coupled to the first gathering and wire-stitching machine and the first cutter in a solo operation of the first gathering and wire-stitching machine, the first cutter being uncoupled from the drive motor during the tandem operation, wherein the first wire-stitching unit is operated by the drive motor independently from the second gathering and wire-stitching machine during the tandem operation. THE REJECTIONS The Examiner has rejected: (i) claims 1, 2, 4-6, 8-10, 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Boss (US 2002/0101019 A1, published August 1, 2002)(hereafter “Boss ‘019”) in view of McCain (US 4,050,686, issued September 27, 1977); (ii) claims 1-4, 6-8, 10, 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Boss ‘019 in view of Cracknell (US 6,994,337 B1, issued February 7, 2006); (iii) claims 1, 2, 4, 6-8, 10, 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Boss ‘019 in view of Bredenberg (US 1,248,252, issued November 27, 1917); and Appeal 2009-008838 Application 11/121,106 4 (iv) claims 11 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Boss ‘019 in view of any of McCain, Cracknell or Bredenberg, and further in view of Boss (US 7,055,814 B1, issued June 6, 2006)(hereafter “Boss ‘814”). ISSUE Has the Examiner established that modifying the Boss ‘019 apparatus to include a drive motor as described in each of the McCain, Cracknell and Bredenberg patents would render obvious the subject matter of the claims on appeal? ANALYSIS Claims 1, 2, 4-6, 8-10, 12 and 14--§ 103--Boss ‘019/McCain The Examiner found that the Boss ‘019 reference “does not expressly disclose a driver motor operatively arranged with [a] first gathering and wire-stitching machine and [a] first cutter, the first cutter adapted to be selectively coupled and uncoupled with the drive motor.” (Ans. 4). The Examiner found that McCain discloses a driver motor operatively arranged with a first gathering and wire-stitching machine and a first cutter, with the first cutter adapted to be selectively coupled and uncoupled with the drive motor, and concluded that it would have been obvious to include the driver motor of McCain in the device of Boss ‘019, “for the purpose of timing all elements through gear reducers.” (Ans. 5). Appellant contends that the combination of the teachings of these two references does not disclose or render obvious that the first wire-stitching machine of Boss ‘019 would be operated by the motor, introduced by the Appeal 2009-008838 Application 11/121,106 5 modification of Boss ‘019 by McCain, independently from the second wire- stitching machine during tandem operation, a limitation set forth in independent claim 1. (Appeal Br. 10-11). In support of this contention, Appellant argues that, in Boss ‘019, the first stitching station in Boss ‘019 is not operated during tandem mode. (Appeal Br. 11, 13), and thus that “pre- stitching of an intermediate product during tandem operation [in Boss ‘019] is not possible.” (Appeal Br. 12). While we do not embrace this latter contention, it does appear that Appellant is correct that the first wire-stitching station or unit of Boss ‘019 is not, in the control scheme specifically disclosed, operated when the overall apparatus is operated in tandem mode. The Examiner’s findings and conclusions, which are directed to the coupling and uncoupling of the cutter, and the provision of the drive motor for timing of operations, do not address how the Boss ‘019 apparatus would be modified by the addition of a drive motor such that it would operate the first wire-stitching unit during tandem operation, and why such a modification would have been obvious to a person of ordinary skill in the art. Independent claim 12 includes a similar limitation, to wit, that a drive is coupled to the first wire-stitching unit to drive a wire-stitching of a first print product in both solo and tandem modes. Again, the Examiner’s findings and conclusions do not address the possible obviousness of that limitation in light of Boss ‘019 and McCain. As such, we are constrained to reverse the rejection of claims 1, 2, 4- 6, 8-10, 12 and 14 as unpatentable over Boss ‘019 and McCain. Appeal 2009-008838 Application 11/121,106 6 Claims 1-4, 6-8, 10, 12 and 14--§ 103--Boss ‘019/Cracknell The Cracknell reference is cited by the Examiner for essentially the same teachings as were relied on in the rejection based on the combination of Boss ‘019 and McCain. (Ans. 5-6). The findings and conclusion of obviousness in this rejection are deficient for the same reasons set forth in our analysis above. The rejection will not be sustained. Claims 1, 2, 4, 6-8, 10, 12 and 14--§ 103--Boss ‘019/Bredenberg The Bredenberg reference is cited by the Examiner for essentially the same teachings as were relied on in the rejection based on the combination of Boss ‘019 and McCain. (Ans. 6). The findings and conclusion of obviousness in this rejection are deficient for the same reasons set forth in our analysis above. The rejection will not be sustained. Claims 11, 13--§ 103--Boss ‘019/McCain/Cracknell/Bredenberg/Boss ‘814 The Examiner does not rely on the Boss ‘814 reference in any manner that overcomes the deficiencies of the rejections of claims 1 and 12, from which claims 11 and 13 depend, respectively. Accordingly, we will not sustain this rejection, either. CONCLUSION The Examiner has not adequately established that modifying the Boss ‘019 apparatus to include a drive motor as described in each of the McCain, Cracknell and Bredenberg patents would have rendered obvious the subject matter of the claims on appeal. Appeal 2009-008838 Application 11/121,106 7 DECISION The decision of the Examiner to reject claims 1-6 and 8-14 is reversed. REVERSED mls VENABLE LLP P.O. BOX 34385 WASHINGTON, D.C. 20043-9998