12154344 (P.T.A.B. Jan. 17, 2013)

Ex Parte Whitten et al

Patent Trial and Appeal BoardJan 17, 2013

12154344 (P.T.A.B. Jan. 17, 2013)

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. 12/154,344 05/22/2008 Dave Elliott Whitten 6003.1036DIV 8473 23280 7590 01/18/2013 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 01/18/2013 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 DAVE ELLIOTT WHITTEN and JOHN LEE KETCHUM ____________ Appeal 2010-011293 Application 12/154,344 Technology Center 3700 ____________ Before WILLIAM V. SAINDON, LYNNE H. BROWNE and BARRY L. GROSSMAN, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-011293 Application 12/154,344 2 STATEMENT OF THE CASE Dave Elliott Whitten and John Lee Ketchum (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5 and 7 under 35 U.S.C. § 102(b) as being anticipated by Fischer (US 4,629,175, iss. Dec. 16, 1986) and rejecting claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Fischer. We have jurisdiction under 35 U.S.C. § 6(b). We Reverse. THE INVENTION Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for removing signatures from a cylinder comprising the steps of: transporting the signatures around a cylinder at a first surface speed, the signatures being gripped at a folded edge by a gripping device; pressing the signatures at a first location with a first conveyor against the cylinder, the first conveyor at the first location moving at a second surface speed lower than the first surface speed; releasing the signatures from the gripping device; and further transporting the signatures. OPINION The Examiner finds that Fischer describes “transporting the signatures around a cylinder at a first surface speed (Fig. 1; via at the speed of cylinder/drum 4);” and “pressing the signatures with a first conveyor against the cylinder at a second surface speed lower than the first speed (Fig. 1; via Appeal 2010-011293 Application 12/154,344 3 the speed of conveyors 1 and 3; lower than the speed of cylinder 4; column 4, lines 63-65 and column 5, lines 57-59).” Ans. 3. Appellants argue that Fischer does not disclose “pressing the signatures at a first location with a first conveyor against the cylinder . . . .” App. Br. 4; Reply Br. 2. Further, Appellants argue that “[t]here is absolutely no indication in Fischer et al. that delivery belt 3 presses the printed products against drum 4.” App. Br. 5; Reply Br. 2. Appellants’ argument is convincing because there is insufficient evidence to support the Examiner’s finding that Fischer discloses “pressing the signatures at a first location with a first conveyor against the cylinder” as required by claim 1. While Figure 1 appears to show the signatures (11) in contact with both the conveyor (3) and the drum (4), Fischer’s Specification does not describe conveyor (3) as pressing the signatures (11) against the drum (4). The Examiner has not explained nor do we discern how conveyor (3) presses the signatures (11) against the drum (4). Indeed, Fischer seems to indicate that the drum is moving faster than the conveyor 3 (see, e.g., col. 6, ll. 3-9), such that if the drum were pressing the signatures against the conveyor 3, then the drum would induce an undesirable shearing force on the signatures. Accordingly, we do not sustain the Examiner’s rejection of claim 1 or claims 2-5 and 7 which depend therefrom. The Examiner’s obviousness rejection of claim 6 contains the same factual deficiency and is likewise not sustained. DECISION We reverse the Examiner’s rejection of claims 1-5 and 7 under 35 U.S.C. §102(b). Appeal 2010-011293 Application 12/154,344 4 We reverse the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a). REVERSED mls