11337566 (B.P.A.I. Feb. 21, 2012)

Ex Parte Stab

Board of Patent Appeals and InterferencesFeb 21, 2012

11337566 (B.P.A.I. Feb. 21, 2012)

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. 11/337,566 01/24/2006 Rudolf Stab 4092 23294 7590 02/21/2012 JONES, TULLAR & COOPER, P.C. P.O. BOX 2266 EADS STATION ARLINGTON, VA 22202 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 02/21/2012 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 RUDOLF STAB ________________ Appeal 2009-012881 Application 11/337,566 Technology Center 3700 ________________ Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012881 Application 11/337,566 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1 and 3-20. Claim 2 has been cancelled (Br. 5). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter The claimed subject matter pertains to a signature conveying device. Appellant describes a ‘signature’ as a length of printed material that is equivalent to that of a typical newspaper page (Br. 11, 12). The conveying device includes a conveying cylinder having seven cutting blade backstops disposed about its circumference and four cutting blades cooperating with the seven cutting blade backstops. Sole independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A conveying device in a folding apparatus comprising: a conveying cylinder adapted to convey signatures, said conveying cylinder having a conveying cylinder circumference extending in a conveying cylinder circumferential direction; seven counter-cutting strips arranged spaced sequentially on said conveying cylinder circumference and being adapted to form cutting blade backstops; a signature holding device adjacent each one of said seven backstops on said cylinder conveying circumference; and four cutting blades cooperating with said seven cutting blade backstops. References Relied on by the Examiner Tomczak US 6,279,890 B1 Aug. 28, 2001 Peterson GB 2014114 A Aug. 22, 1979 Appeal 2009-012881 Application 11/337,566 3 The Rejections on Appeal Claims 1, 3-7 and 9-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Peterson (Ans. 4). Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Peterson and Tomczak (Ans. 7). ISSUE Has the Examiner provided sufficient evidence and reasoning to show that Peterson renders obvious a conveying cylinder having seven cutting blade backstops and four cutting blades cooperating with the seven backstops as set forth in claim 1? ANALYSIS Sole independent claim 1 is separately argued by Appellant (Br. 10). Appellant argues claims 3-7 and 9-20 together under a single heading with distinct assertions made for claims 3, 9 and 20 (Br. 15). These three claims will be discussed below. Finally, claim 8 is separately argued (Br. 18). The rejection of claim 1 as being unpatentable over Peterson The Examiner relies on Peterson for all the limitations of claim 1 but acknowledges that Peterson does not disclose “seven” cutting blade backstops nor “four” cutting blades cooperating with the backstops (Ans. 4). The Examiner states that it would have been obvious to modify Peterson’s cylinder to have the requisite number of backstops and cutting blades “since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art” (Ans. 4). Appeal 2009-012881 Application 11/337,566 4 Appellant contends that “it is well-known that a mere duplication of parts has no patentable significance unless a new and unexpected result is produced” and that the incorporation of seven backstops and four cutting blades “does produce a new or unexpected result” (Br. 11)(italics added). Appellant’s attorney supports this contention by identifying the need for a gap between adjacent, consecutively cut inner signatures so that when the outer signature 27 is applied over the inner signature 24 on the cylinder, the difference in radii does not cause the inner signature to be cut again and to insure that the edges of the inner and outer signatures are in alignment despite a difference in their radii (Br. 11-12 referencing Fig. 2). Appellant’s attorney asserts that the amount of effective circumferential length of a cylinder that is required to form a gap decreases as the cylinder size increases (Br. 13). Appellant’s attorney states that it is this aspect of the subject invention which is not obvious “and which does not amount to a mere duplication of parts or to a duplication of essential working parts” (Br. 13). Appellant relies on basic principles of physics and mathematics in arguing that a gap has less effect on the overall circumference of a larger cylinder than it does on a smaller cylinder. We are not persuaded that one skilled in the art is unaware of these principles or that following them will produce a “new and unexpected” result sufficient enough to overcome the Examiner’s rejection based on a mere duplication of parts. We are also instructed that claim language is interpreted broadly in light of the specification and we must be careful not to read limitations from the specification into the claims (see In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). As such, we are not persuaded by Appellant’s contention Appeal 2009-012881 Application 11/337,566 5 regarding Peterson’s grooves 13 and 15, which is directed to details of the counter-cutting strips not found in claim 1 (Br. 15-16; see also Ans. 9). Accordingly, we are not persuaded by Appellant’s contentions and we sustain the Examiner’s rejection of claim 1. The rejection of claims 3-7 and 9-20 as unpatentable over Peterson Appellant argues claims 3-7 and 9-20 under a single heading and also specifically recites the limitations of claims 3, 9 and 20 (Br. 17). Appellant contends that all these rejected claims, including claims 3, 9 and 20, are allowable because their limitations “are not shown or suggested in the Peterson reference” (or similar language) and requests that their rejection be reversed (Br. 17). Our reviewing court has recently stated that the Board reasonably interprets 37 C.F.R. § 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art (see In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011)). Although this is a sufficient rationale to sustain the Examiner’s rejection of claims 3-7 and 9- 20, we further agree with the Examiner’s rationale for the specific rejection of claims 31 and 92 and that as regarding claim 20, Appellant does not address the Examiner’s stated rejection that Peterson could be modified to have more than one cutting cylinder (Ans. 7; Br. 17). Accordingly, we sustain the rejection of claims 3-7 and 9-20. 1 The Examiner finds that Peterson discloses blades “arranged sequentially in a direction of said conveying cylinder circumference” (Ans. 5 referencing Peterson Figs. 1-3). 2 The Examiner finds that Peterson’s holding devices 9 and 11 “are shiftable as they are pivot [sic]” (Ans. 5 referencing Peterson Figs. 1-3). Appeal 2009-012881 Application 11/337,566 6 The rejection of claim 8 as being unpatentable over Peterson and Tomczak Claim 8 depends from claim 1 and we incorporate our discussion regarding claim 1 herein. The Examiner relies on Tomczak for disclosing “a folding jaw cylinder cooperating with [a] conveying cylinder” (Ans. 7). Appellant does not respond to the Examiner’s rejection and instead contends that “Tomczak does not supply the teachings of the subject invention which are not set forth in the primary reference to Peterson” (Br. 18). We do not find any deficiencies in the primary reference to Peterson and accordingly, we sustain the Examiner’s rejection of claim 8. CONCLUSION The Examiner has provided sufficient evidence and reasoning to show that Peterson renders obvious a conveying cylinder having seven cutting blade backstops and four cutting blades cooperating with the seven backstops as set forth in claim 1. DECISION The rejection of claims 1 and 3-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED mls