Ex Parte Sussmeier et al

Patent Trial and Appeal Board

Feb 20, 2013

10803636 (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN W. SUSSMEIER, JOHN R. MASOTTA, and
BORIS ROZENFELD
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Appeal 2010-010136
Application 10/803,636
Technology Center 3700
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
John W. Sussmeier et al. (Appellants) seek our review under 35 U.S.C
§ 134 of the Examiner’s final decision rejecting claims 1, 4-8, 11, and 12.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellants’ claimed invention relates to an inserter input system for
generating sheets of printed material which are to be collated and inserted
into envelopes. Spec. 1:9-10.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An inserter input system comprising:
a web feeder providing a web of printed material, the web
feeder feeding the web in a first direction;
a web slitting device splitting the web along the first
direction into at least two portions;
one or more sensors for scanning a code on the web, the
code indicating a number of sheets for respective collations, the
one or more sensors further providing a position indication of
the sheets in the inserter input system;
a transverse web cutter cutting the portions of split web
transverse to the first direction while the web is transported
through the web cutter to form side-by-side individual sheets,
the individual sheets having a width in the transverse direction
and a length in the first direction, the web cutter cutting sheets
at a cutting rate;
a right angle turn mechanism downstream of the web cutter
whereby the individual sheets are rearranged to be one on top of
the other in a shingled arrangement, the right angle turn
mechanism comprising a portion of a right angle turn transport
transporting individual sheets at a first velocity, the first

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 19, 2010) and the Examiner’s Answer (“Ans.,” mailed Apr.
14, 2010).
Appeal 2010-010136
Application 10/803,636

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velocity being a function of the cutting rate multiplied by the
width of the individual sheets;
a high speed separation transport downstream of the right
angle turn transport and pulling individual shingled sheets out
from the shingled arrangement and whereby sheets are
thereafter transported serially and separated by a predetermined
gap, wherein the high speed separation transport has a second
velocity that is a function of the cutting rate multiplied by a
sum of the length of the individual sheets and the
predetermined gap; and
a controller coupled to the one or more sensors, the
controller adjusting the cutting rate as a function of the number
of sheets in a collation arriving at the high speed separation
transport, whereby a lower number of sheets in the collation
corresponds to decreasing the cutting rate, and a greater number
of sheets in the collation corresponds to increasing the cutting
rate.
The Examiner relies upon the following evidence:
Müller US 4,073,039 Feb. 14, 1978
Moser US 5,439,208 Aug. 8, 1995
Thompson US 5,896,797 Apr. 27, 1999
Ifkovits US 6,443,447 B1 Sep. 3, 2002

Claims 1, 4-8, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ifkovits, Moser, Thompson, and Müller.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
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ANALYSIS
Appellants argue claims 1, 4-8, 11, and 12 as a group (App. Br. 11-
15). We select claim 1 as the representative claim for this group, and the
remaining claims 4-8, 11, and 12 each stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded by Appellants’ contention that the Examiner
failed to establish a prima facie case of obviousness because the cited
references fail to teach or suggest the claimed combination. We disagree
with Appellants’ assertion that “Thompson fails to teach or suggest any
control of the cutting rate of cutter 28.” App. Br. 13. To the contrary,
Thompson (Col. 5, ll. 54-59), states:
Instead of displacing roller 54A in the manner described above
to alter then [sic] normal length of a sheet 38, microprocessor
can, if desired, simply directly operate assembly 56 at varied
time intervals to vary the length of sheets 37 and 38 cut from
strip 10 by blade assembly 56 of cutter 28.
Thus, we find that Thompson discloses using a microprocessor to control the
cutting rate of a cutter by operating the blade assembly at varied time
intervals.
We also are not persuaded by Appellants’ argument that Müller
discloses a “cam arrangement” which “refrains from cutting when a group
of sausage links is desired,” and therefore teaches away from the claimed
combination. First, the Examiner relies on Müller only for the proposition
that it is old and well known in the art of continuous cutting to adjust the
cutting rate based on the number of output, which Appellants do not contest.
Ans. 8. Second, the Appellants have not addressed the combination of prior
art references as a whole but simply improperly argue the merits of each
reference individually. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
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(“The test for obviousness is not . . . that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”). Appellants cannot overcome the
Examiner’s obviousness determination by merely asserting that Müller
discloses an element, a cam arrangement, which Appellants have not
claimed and which the Examiner has not relied upon. Third, Appellants
have not shown that Müller criticizes, discredits, or otherwise discourages
the solution claimed in the application. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). (“The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed in the ... application.”). Accordingly, Appellants have
not shown that Müller teaches away from the claimed invention. We
therefore conclude that Appellants have not overcome the Examiner’s prima
facie case of obviousness.
CONCLUSIONS OF LAW
We conclude that Appellants have not overcome the Examiner’s
rejection of claims 1, 4-8, 11, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Ifkovits, Moser, Thompson and Müller.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 4-8, 11,
and 12.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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