Ex Parte Weber

Patent Trial and Appeal Board

May 31, 2018

14538415 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/538,415 11/11/2014 Roland Anton Weber
45473 7590 06/01/2018
EGL/Research Triangle Park
P.O. BOX 110285
RESEARCH TRIANGLE PARK, NC 27709
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14598-35 9400
EXAMINER
FUQUA, SHAWNTINA T
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/01/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND ANTON WEBER
Appeal2017-008746
Application 14/538,415
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roland Anton Weber (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-10 and 12. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellant's invention relates to an apparatus for cutting planar
substrates charged with pharmaceutically active agents. Spec. para. 2.
Appeal2017-008746
Application 14/538,415
Claims 1 and 12 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An apparatus for cutting continuous planar substrates
charged with pharmaceutically active agents, wherein the
apparatus comprises:
i) a feeding mechanism, wherein the feeding mechanism
comprises a first and a second pair of rollers;
ii) a cutting zone, wherein the cutting zone is between the
pairs of rollers; and
iii) one or more cutting lasers capable of making segment-
like cuts in the continuous planar substrate within the
cutting zone,
wherein the continuous planar substrate is charged with
one or more pharmaceutically active agents.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 5-10, and 12 under 35 U.S.C. § I03(a) as being
unpatentable over Stelzl (US 2008/0263841 Al, published Oct. 30, 2008);
and
(ii) claims 3 and 4 under 35 U.S.C. § I03(a) as being unpatentable
over Stelzl and Nagashima (US 4,642,659, issued Feb. 10, 1987).
ANALYSIS
Claims 1, 2, 5-10, and 12--0bviousness--Stelzl
Appellant presents the same arguments for independent claims 1 and
12. See Br. 5-7. Appellant does not present separate arguments directed to
dependent claims 2 and 5-10. Id. We thus regard claims 1, 2, 5-10, and 12
as being argued as a group. We take claim 1 as representative of this group,
and claims 2, 5-10, and 12 stand or fall with claim 1.
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Appeal2017-008746
Application 14/538,415
The Examiner finds that Stelzl discloses an apparatus for cutting
planar substrates having all of the claimed limitations, but does not disclose
that the substrate being cut is charged with a pharmaceutical agent. Final
Act. 2 ( citing Stelzl Figs. 1-2). More particularly, the Examiner points to
guide rollers 16, 17, 18, and 19 of Stelzl as meeting the claim limitation
calling for a feeding mechanism having a first and a second pair of rollers.
Id. The Examiner additionally takes the position that substrates charged
with pharmaceutical agents are conventional. Id. The Examiner concludes
that it would have been obvious to modify the apparatus of Stelzl to process
a substrate charged with pharmaceutical agents as a matter of design choice.
Id. at 2-3.
Appellant contends that Stelzl does not disclose a feeding mechanism
comprising a pair of rollers. Br. 6. Appellant argues that Stelzl discloses
that the set of rollers 16, 17, 18, and 19 are guide rollers that are not used for
feeding material into the apparatus, and that roll 21 is a feeding mechanism
as it is driven by an electric motor. Id. As such, Appellant contends that the
feeding mechanism of Stelzl comprises a single roller. Id.
This argument is unpersuasive. As the Examiner explains, the rollers
16, 17, 18, and 19 of Stelzl form a part of a feeding mechanism because the
rotation of those rollers allows the substrates to be fed through a cutting zone
more efficiently. Ans. 3. Further, claim 1 does not require that the recited
first and second pair of rollers are driven by a motor(s).
Appellant additionally argues that the Examiner erroneously relies on
design choice to modify the apparatus of Stelzl. Br. 6. Appellant argues that
the Specification discloses cutting complex shapes and sizes from a substrate
charged with pharmaceutically active agents as well as well as scoring or
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Appeal2017-008746
Application 14/538,415
cutting multilayer substrates. Id. at 7 ( citing Spec. para. 6). Appellant
further argues that the Examiner fails to provide any reason why the skilled
artisan would look to Stelzl for a solution to cutting substrates charged with
pharmaceutically active agents, or to replace metal substrates utilized in the
apparatus of Stelzl with substrates charged with pharmaceutically active
agents, to arrive at the claimed invention. Id.
Appellant's contentions do not apprise us of Examiner error. As
pointed out by the Examiner, claim 1 does not explicitly require that the
apparatus be configured to cut complex shapes and sizes from substrates, or
to score or cut multilayer substrates. Ans. 4. The Examiner also points out
that Appellant's Specification discloses that substrates with
pharmaceutically active agents are conventional. Id. (citing Spec. paras. 3-
7). The Examiner further explains that the apparatus of Stelzl is capable of
cutting substrates charged with pharmaceutically active agents. In this
regard, Appellant's argument that Stelzl is limited to cutting metal substrates
(Br. 7) is undermined by the Stelzl disclosure, which identifies that at least
several other types of substrates, including coated paper, may be processed
by the cutting apparatus therein. Stelzl, para. 2. Neither Appellant's
Specification nor any other evidence of record persuasively establishes any
criticality or unexpected results obtained by employing substrates that are
charged with pharmaceutically active agents for the claimed cutting
apparatus.
Accordingly, we sustain the rejection of claims 1, 2, 5-10 and 12 as
being unpatentable over Stelzl.
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Appeal2017-008746
Application 14/538,415
Claims 3 and 4--0bviousness--Stelzl/Nagashima
The Examiner relies on Nagashima as disclosing an apparatus that is
capable of: applying a braking force to a substrate; applying a displacement
torque to a substrate; and rotating rollers in opposite directions from each
other. Id. ( citing N agashima co 1. 7, 11. 3 9---64). The Examiner concludes that
it would have been obvious to modify the apparatus of Stelzl to include these
capabilites, as taught by Nagashima, in order to allow the substrate
processed therein to be properly stretched. Id.
Appellant contends that no sufficient reasoning is provided by the
Examiner for making the proposed modification. Br. 8. Appellant argues
that nothing in Stelzl indicates that improper stretching of the substrates is a
problem that needs to be addressed. Id. at 9.
Appellant's contentions are persuasive. Nagashima discloses
tensioning or stretching paper that has already been cut, for printing
purposes. See Nagashima Abstract; col. 3, 11. 48-56; col. 7, 11. 39---64. The
Examiner fails to establish that the apparatus of Stelzl, which transports a
continuous web of material through a cutting zone from a feed roll to a take-
up roll driven by an electric motor, does not provide sufficient tensioning or
stretching of the web or substrate. As such, the articulated reason to modify
the apparatus of Stelzl, namely to allow the substrates to be properly
stretched, lacks rational underpinnings.
The rejection of claims 3 and 4 is therefore not sustained.
DECISION
The rejection of claims 1, 2, 5-10, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Stelzl is affirmed.
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Appeal2017-008746
Application 14/538,415
The rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as being
unpatentable over Stelzl and Nagashima is reversed.
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-IN-PART
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