Ex Parte Stadele

Board of Patent Appeals and Interferences

Jun 30, 2011

10805337 (B.P.A.I. Jun. 30, 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.
10/805,337 03/22/2004 Norbert Stadele STADELE2 9096
1444 7590 06/30/2011
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
EXAMINER
MUSSER, BARBARA J
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
06/30/2011 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 NORBERT STADELE
____________________

Appeal 2010-001256
Application 10/805,337
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Alden (WO 2004/041541 A1; published May 21, 2004) in
view of Welschlau (US 4,587,898; issued May 13, 1986), as evidenced by
Spann (US 6,491,361 B1; issued December 10, 2002), and further in view of
Löffler (US 5,602,746; issued February 11, 1997). We have jurisdiction
under 35 U.S.C. § 6(b).
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We AFFIRM.
Appellant’s invention relates to digitally printing webs during
manufacture of corrugated board, before the sheets are cut to size, with
varying scaling (Spec. 2: 10-20). Claim 9 is illustrative:
9. A method for the manufacture of sheets of corrugated
board on a corrugating machine, comprising the following
steps:
providing a corrugating machine which comprises at least
two unroll stands for unwinding continuous webs of material as
well as at least one processing equipment for producing at least
one web of corrugated board from the webs of material;
determining the distances between adjacent marks (17,
18) on at least one of the webs of material (3) with at least one
measuring device (19, 44; 19, 75, 76; 44; 75, 76) being in
signaling connection with a control device (7);
determining a degree of shrinkage in at least one
direction of the webs of material (3, 8, 22) based on the ratio of
the distances of the marks (17, 18);
determining scaling factors for the printing pattern by the
control device (7) so that the desired size of the printing
patterns will appear on the web;
digitally printing the printing pattern on at least one web
of material on the corrugating machine in accordance with the
determined scaling factors; and
cutting the sheets of corrugated board from the digitally
printed web of corrugated board in accordance with the shape
and size of the digitally imprinted pattern.
Appellant focuses his arguments on particular limitations common to
both independent claims 9 and 12 and do not present any separate arguments
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directed to dependent claim 11. (See generally Br.). Therefore, we decide
this Appeal on the basis of representative independent claim 9.
II. DISPOSITIVE ISSUE
The dispositive issue on appeal arising from the contentions of
Appellant and the Examiner is: does the evidence support the Appellant’s
view that the Examiner erred in concluding that the method for the
manufacture of sheets of corrugated board recited in claim 9 would have
been obvious to one of ordinary skill in the art having the teachings of
Alden, Welschlau, Spann, and Löffler? We answer this question in the
negative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
Appellant contends that one of ordinary skill in the art would not have
combined the teachings of Alden and Welschlau (Br. 12-18). Specifically,
Appellant argues that Alden and Welschlau are from different arts, since
Alden teaches printing with a digital printer on pre-fabricated corrugated
board and Welschlau teaches printing on a single web of a corrugated board
during manufacture using printing forms disposed on carrier bands (Br. 14).
According to Appellant, the combined teachings of Alden and Welschlau
would not have directed one of ordinary skill in the art how to use a digital
printer in an in-line process (Br. 15).
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The Examiner has relied on the teachings of Alden to show that it was
known in the art to use a digital printer1 to print on corrugated board (Ans.
3). Appellant’s argument, in part, is based on the premise that Alden does
not teach digital printing in an in-line process, but rather teaches digital
printing only on pre-cut, pre-fabricated corrugated boards. We disagree with
Appellant’s premise in fact. While Alden is directed to digitally printing on
pre-fabricated corrugated board (see Alden, p. 3, ll. 8-10), there is nothing in
the teachings of Alden that the printing does not occur in an in-line process.
To the contrary, Alden teaches that the digital printing and cutting “is
performed sequentially in one and the same line, the processing of the
workpiece 1 can be managed by one and the same operator (Alden, p. 3, ll.
4-6). Thus, we cannot agree with Appellant that there is no suggestion in the
teachings of Alden to use a digital printer in an in-line, continuous process.
Alden further teaches that the workpiece 1 is a “substantially plane
workpiece” that moves within the printer and continues its advance to a
conventional laser cutter (Alden, p. 2, l. 24 to p. 3, l. 1). In other words,
Alden’s workpiece is not necessarily pre-cut boards, but more likely is a
continuous web of corrugated board.
We also agree with the Examiner that Welschlau teaches that the
concept of printing on a single web of a corrugated board in a continuous
corrugated board manufacturing process was known to one of ordinary skill
in the art (Ans. 7; Welschlau, col. 2, ll. 16-25, col. 5, l. 65 to col. 6, l. 7).
Both Alden and Welschlau teach printing an image on an exterior web of a
corrugated board. Yet, Welschlau teaches that one of ordinary skill in the art

1 Appellant does not dispute the Examiner’s finding that the ink-jet printer
taught by Alden is a “digital printer,” as evidenced by Spann (Ans. 3; see
generally Br.).
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would understand how to print on the web during manufacture of the board,
instead of on a web of a prefabricated board as taught by Alden.
We agree with the Examiner that one of ordinary skill in the art would
have modified the printing of Alden to perform the digital printing during
the manufacturing process, as taught by Welschlau, to allow continuous
formation of the product (Ans. 3). Likewise, one of ordinary skill in the art
would have used a digital printer for the advantage taught by Alden, i.e., that
“the appearance of the graphic pattern can be readily modified by means of a
computer” (Alden, p. 2, ll. 27-29). “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant’s arguments do not account for the skill of the ordinary
artisan, who would have been capable of modifying the printing of Alden to
be performed earlier in the manufacturing process of the corrugated board as
taught by Welschlau. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421. After all, in an
obviousness assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738 (Fed. Cir. 1985).
Although Appellant states that different problems are addressed with
printing on a pre-fabricated corrugated board than printing on a web of a
corrugated board during manufacture thereof (Br. 13), Appellant points to no
particular problems that the ordinary artisan would not have had the skill or
ordinary creativity to address having the combined teachings of Alden and
Welschlau.
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The opinion evidence provided in the Stadele Declaration is likewise
unpersuasive. The Stadele Declaration focuses on the fact that neither Alden
nor Welschlau addresses the problem of shrinkage and that the teaching of
the references, separately, would not be suitable for addressing the shrinkage
problem by continuous scaling of the printing image (see Stadele
Declaration ¶ 5). The Stadele Declaration does not reach the Examiner’s
application of the teachings of Loffler (see generally Stadele Declaration).
The Examiner has relied on the teachings of Löffler to demonstrate
that printing adjacent marks for determining the degree of shrinkage and
scaling factors for a digital image was known to the skilled artisan. Also,
the Examiner has applied this teaching to the combined teachings of Alden
and Welschlau. Thus, it is of no moment that neither Alden nor Welschlau,
separately, teach addressing the problem of shrinkage. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant further contends that, since Löffler teaches using print
forms, that Löffler fails to teach or suggest flexible scaling of a printing
pattern in an in-line process (Br. 20; Reply Br. 5-8). Again, we disagree
with Appellant’s limited assessment of the teachings of Löffler.
Löffler teaches three ways to address the problem of changes in
dimension caused by drying: (a) adjusting the temperature and/or speed of
the thermo-drying device, (b) making a print form taking into account the
mean changes of the outer dimensions, and (c) printing the image by a
computer-controlled imaging unit, imaging data, and compensating the
printing image for the mean changes of the outer dimensions (Löffler, col. 3,
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l. 45-col. 3, l. 3). Considering the third method of addressing the problem
(c), Löffler directly teaches using a digital (computer-controlled) printer and
scaling the image based on imaging data.
Moreover, Appellant’s claims do not recite that the image must be
scaled dynamically or continuously. During examination, “claims . . . are to
be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read 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)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Claim 9 recites the steps of “determining a degree of shrinkage,”
“determining scaling factors” and “digitally printing the printing pattern . . .
in accordance with the determined scaling factors” (claim 9). Thus, scaling
and printing the image based on any degree of shrinkage, including an
average or mean degree of shrinkage, and performing the scaling and
printing steps only once, would meet the limitation of the claimed invention.
Thus, we find it of no moment that Löffler fails to teach dynamically scaling
an image to account for changes in the dimensions of the paper.
Although Appellant states that different problems are addressed with
printing on paper sheets than printing on a web of a corrugated board during
manufacture thereof (Reply Br. 6), Appellant points to no particular
problems that the ordinary artisan would not have had the skill or ordinary
creativity to address having the combined teachings of Alden, Welschlau,
and Löffler.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
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VI. CONCLUSION
On the record before us, we sustain the rejection maintained by the
Examiner.
VII. DECISION
The decision of the Examiner is affirmed.
VIII. TIME PERIOD FOR RESPONSE
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

Cam/sld