Ex parte Steidinger et al.

Board of Patent Appeals and Interferences

Aug 15, 2000

08852708 (B.P.A.I. Aug. 15, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID J. STEIDINGER and MARK S. STEIDINGER
________________
Appeal No. 1999-0911
Application No. 08/852,708
________________
ON BRIEF
________________
Before CALVERT, FRANKFORT, and GONZALES, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 52
to 59, all the claims remaining in the application.
Appeal No. 1999-0911
Application No. 08/852,708
Since the patentees of this patent appear to be the1
same persons as the present appellants, and the patent was
issued after the filing date of appellants’ parent
application, it seemingly would not constitute prior art
against appellants. However, since appellants have not argued
this point, the patent will be considered in evaluating the
merits of the rejections.
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The claims on appeal are drawn to a method of handling a
continuous, elongated web, and are reproduced in the appendix
of appellants’ brief.
The prior art applied in the final rejection is:
Klaeser et al. (Klaeser) 4,838,982 Jun. 13,
1989
Otruba 5,413,651 May 09,
1995
Steidinger et al. (Steidinger) 5,441,796 Aug. 15,1
1995
(filed June 10,
1994)
The admitted prior art on page 1 to page 3, line 15, of
appellants’ specification (APA).
The appealed claims stand finally rejected under 35
U.S.C.
Appeal No. 1999-0911
Application No. 08/852,708
A rejection of claims 52 to 59 under 35 U.S.C. § 112,2
first paragraph (non-enablement), has been withdrawn (removed)
by the examiner (Answer, page 9).
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§ 103(a) as unpatentable over the following combinations of
prior art:2
(1) Claims 52 and 53, APA in view of Steidinger;
(2) Claims 54, 55, 58 and 59, APA in view of Steidinger and
Otruba;
(3) Claims 56 and 57, APA in view of Steidinger and Klaeser.
Rejection (1)
The argument with regard to this rejection concerns the
final step of claim 52, which reads:
providing sufficient length in said section of
said web between said feed means and said cut line
to reduce the tensile stress in said section of said
web between said feed means and said cut line to
prevent tears in said web incident to severing of
said web.
The examiner takes the position that it would have been
obvious to modify the method of the APA to include this step
in view of Steidinger. As stated by the examiner at pages 4
to 5 of the Answer:
Appeal No. 1999-0911
Application No. 08/852,708
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It would have been obvious to a person of
ordinary skill in the art at the time the invention
was made to have provided in Appellants’ admitted
prior art that length in the web in a section
between the feed means and the first cylinder is
greater than the direct distance between the
location at which the web leaves the feed means and
the location at which the blade contacts the first
cylinder using support rollers because Steidinger et
al. teach that such a web feed path is well-known
and it is [sic: would have been] obvious to replace
one feed path with an art recognized alternative
feed path used for the same purpose of moving a web
from a feed means to a vacuum cylinder for cutting.
Since the method of Appellants’ admitted prior
art in view of Steidinger et al. is the same as
presently claimed, it is reasonable to suggest that
between the feed means and the cut line there will
be a reduction in tensile stress which will prevent
the tears in the web incident to severing the web to
the same degree as is present in the pending claims,
although this may not be specifically recited.
Although the examiner acknowledges that Steidinger does
not indicate a reason for the distance shown between feed
means 20 and the location at which the blade on cylinder 27
contacts cylinder 28 (i.e., contacts web 19) (Answer, page 4),
he appears to take the position at page 10 of the Answer that
the combination of the APA and Steidinger would inherently
meet the above-quoted last step of claim 52 because
appellants’ specification (at pages 10 and 11)
Appeal No. 1999-0911
Application No. 08/852,708
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indicates that "sufficient" includes increasing the
length of the web in the section between the feed
means and the first cylinder to be greater than the
direct distance between the location at which the
web leaves the feed means and the location at which
the blade contacts the first cylinder. (Underlining
omitted)
We do not consider the examiner’s position to be well
taken. Contrary to the examiner’s above-quoted statement,
appellants do not disclose that every apparatus in which the
length of the web between the feed means and the cutoff point
on the vacuum cylinder is greater than the direct distance
between those points will provide a sufficient length to
prevent tears, as called for by claim 52. Rather, they
disclose at page 11, lines 6 to 13:
By advantageously adjusting the web length
between the point of cutoff on the vacuum cylinder
14 and the feed roller 12 from approximately 38" or
less to a length of approximately 60" or more, the
tension spike and transverse edge tearing may be
reduced. These web lengths are not specified
exactly because of interaction with the following
described techniques and also a variability in the
physical characteristics of transfer tapes applied
or other webs being severed.
Thus, the mere fact that the Steidinger web feed path is
longer than the direct path between feed means 20 and cylinder
27 does not necessarily mean that it is sufficiently long to
Appeal No. 1999-0911
Application No. 08/852,708
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prevent tears. Moreover, Steidinger does not disclose any
dimensions or other information from which it may be inferred
that the web feed path is sufficiently long to prevent tears.
Accordingly, it cannot be concluded that the combination of
the APA and Steidinger would result in a method which would
inherently meet the last step of claim 52. The mere fact that
a certain thing may result from a given set of circumstances
is not sufficient to establish inherency, and in this case,
absent inherency, a prima facie case of obviousness has not
been established. Cf. In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ 1955, 1956 (Fed. Cir. 1993).
Rejection (1) therefore will not be sustained.
Rejections (2) and (3)
These rejections will not be sustained, since the
additional references applied, Otruba and Klaeser, do not
supply the deficiencies in the APA - Steidinger combination
discussed above.
Appeal No. 1999-0911
Application No. 08/852,708
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Conclusion
The examiner’s decision to reject claims 52 to 59 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-0911
Application No. 08/852,708
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IC/RWK

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