Ex Parte Sumida et al

Board of Patent Appeals and Interferences

Aug 26, 2003

09159767 (B.P.A.I. Aug. 26, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASAHIRO SUMIDA
and YUICHI YAMAZAKI
__________
Appeal No. 2002-1164
Application 09/159,767
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and MCQUADE, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Masahiro Sumida et al. appeal from the final rejection
(Paper No. 19) of claims 9 through 18, all of the claims pending
in the application.
THE INVENTION
The invention relates to “a paper web folding and cutting
apparatus particularly for a form printing press” (specification,
page 1). Representative claim 9 reads as follows:
9. A paper web folding and cutting apparatus comprising:
a paper web traveling path along which a continuous paper
web can travel at a predetermined traveling speed and in a paper
web traveling direction;
Appeal No. 2002-1164
Application 09/159,767
1 The record contains an English language translation of
this reference provided by the examiner (Paper No. 25) as well as
a copy of equivalent U.S. Patent No. 5,800,327.
2
a cutting assembly disposed along the paper web traveling
path and adapted to form a line of cuts, having at least one
uncut portion, at the top and bottom of each portion of the
continuous paper web to be folded; and
an oscillatory shooter assembly disposed along the paper web
traveling path, said oscillatory shooter assembly being located
downstream of said cutting assembly with respect to the paper web
traveling direction,
said oscillatory shooter assembly including a counter roller
and a nozzle roller disposed at a lower end portion of said
oscillatory shooter assembly, said counter and nozzle rollers
being rotatable at a peripheral speed that is faster than the
paper web traveling speed, said nozzle roller being movable into
contact with said counter roller and away from said counter
roller so as to be separated therefrom,
said oscillatory shooter assembly being capable of moving in
an oscillatory motion with the continuous paper web interposed
between said nozzle roller and said counter roller so as to fold
the continuous paper web in a zigzag fashion along each of the
lines of cuts formed by said cutting assembly so that each fold
coincides with one of the lines of cuts,
wherein the continuous paper web is cut along one of the
lines of cuts by moving the nozzle roller into contact with the
counter roller when the one cut line approaches the vicinity of
an upstream side of said nozzle roller and said counter roller.
THE PRIOR ART
The reference relied on by the examiner to support the final
rejection is:
Kishine et al. 9-76460 Mar. 25, 1997
Japanese Patent
Document (Kishine)1

Appeal No. 2002-1164
Application 09/159,767
3
THE REJECTION
Claims 9 through 18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Kishine.
Attention is directed to the brief (Paper No. 22) and answer
(Paper No. 23) for the respective positions of the appellants and
examiner regarding the merits of this rejection.
DISCUSSION
Kishine discloses an apparatus 2 for folding and cutting a
continuous paper web 1 which has been printed and cross
perforated at predetermined intervals by an upstream printing
machine and perforator device. The apparatus has much in common
with the apparatus set forth in the appealed claims including a
paper web traveling path 17, a cutting assembly 20 adapted to
form in the web a line of cuts 46 having at least one uncut
portion 47, and an oscillatory shooter assembly 3 having a
counter roller 4 and a nozzle roller 5. In use, the web is drawn
into the apparatus by pull rollers 41 and 16 and folded in a
zigzag manner along the cross perforations by the oscillatory
shooter assembly. When marks applied to the web at predetermined
points along its length are detected by a sensor 45, the cutting
Appeal No. 2002-1164
Application 09/159,767
4
assembly is actuated to form a line of cuts in the web,
preferably coincident with a set of cross perforations, and the
counter and nozzle rollers are engaged with the web to separate
it along the line of cuts to produce an individual form having a
desired length and number of folds.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
As indicated above, independent claim 9 requires a cutting
assembly adapted to form a line of cuts at the top and bottom of
each portion of the web to be folded, and an oscillatory shooter
assembly capable of folding the web in zigzag fashion along the
cut lines so that each fold coincides with one of the cut lines.
Independent claims 16 and 17 contain similar recitations, and
also require that the cutting assembly operate continuously as
the web travels along the web traveling path. The examiner’s
determination that Kishine meets these limitations is unsound.
To begin with, Kishine’s cutting assembly forms cut lines
only at predetermined points where the web is to be separated by
the counter and nozzle rollers, not at the top and bottom of each
Appeal No. 2002-1164
Application 09/159,767
5
portion of the web to be folded. Further, Kishine’s oscillatory
shooter assembly folds the web in zigzag fashion only along the
cross perforations, not the cut lines, and none of the folds in
the web coincides with a cut line. Finally, Kishine’s cutting
assembly operates only when a mark is detected by the sensor, not
continuously as the web travels along the web traveling path.
Although the Kishine apparatus arguably could be controlled to
operate in accordance with the functional claim limitations at
issue (we see no suggestion in Kishine to actually do so), it is
not so controlled as described in the reference, and hence does
not embody structure expressly or inherently capable of
performing the specified functions.
Thus, Kishine fails to teach each and every element of the
apparatus set forth in independent claims 9, 16 and 17.
Accordingly, we shall not sustain the standing 35 U.S.C. § 102(b)
rejection of claims 9, 16 and 17, and dependent claims 10 through
15 and 18, as being anticipated by Kishine.
SUMMARY
The decision of the examiner to reject claims 9 through 18
is reversed.
Appeal No. 2002-1164
Application 09/159,767
6
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
LAWRENCE J. STAAB )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-1164
Application 09/159,767
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