KBA-NOTASYS SA

Patent Trials and Appeals Board

Aug 20, 2021

2020005420 (P.T.A.B. Aug. 20, 2021)

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.
15/062,113 03/06/2016 Johannes Georg SCHAEDE DMB-5571-37 7153
23117 7590 08/20/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
EVANISKO, LESLIE J
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
08/20/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANNES GEORG SCHAEDE and
MATTHIAS GYGI

____________

Appeal 2020-005420
Application 15/062,113
Technology Center 2800
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection under 35 U.S.C. § 103 of claims 22–35. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies KBA-Notasys SA as the real party in
interest (Appeal Br. 3).
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Application 15/062,113

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CLAIMED SUBJECT MATTER
Claim 22 is reproduced below is representative (emphasis added to
highlight a key disputed limitation):
22. A sheet-fed or web-fed printing press for numbering
and varnishing of security documents, including banknotes,
comprising:
a numbering group comprising at least one numbering unit
for numbering printed material in the form of individual sheets
or successive portions of a continuous web carrying multiple
security imprints; and
a varnishing group located downstream of the numbering
group for applying varnish onto recto and verso sides of the
printed material, the varnishing group comprising at least a first
varnishing unit disposed above a path of the printed material to
apply varnish on the recto side of the printed material and at least
a second varnishing unit disposed below the path of the printed
material to apply varnish on the verso side of the printed material,
wherein said printing press further comprises at least a first
transfer cylinder or drum located downstream of the varnishing
group, which first transfer cylinder or drum is designed as a chill
roller to cool down the printed material.

(Appeal Br. 13, Claims Appendix).

REFERENCES
The prior art relied upon by the Examiner is:
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Application 15/062,113

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Name Reference Date
Kamoda et al. US 6,338,299 Bl Jan.15, 2002
Reinhard et al. US 2006/0208412 Al Sept. 21, 2006
Henn et al. US 2008/0017056 Al Jan. 24, 2008
Stiel US 2009/0188405 Al July 30, 2009
Saito US 2010/0132573 Al June 3, 2010
Schaede EP 1 980 393 A1 Apr. 13, 2007
Hirata (as translated) JP 2006-181963 A July 13, 2006

REJECTIONS
Claim(s)
Rejected 35 U.S.C. §
Reference(s)/
Basis
22–27, 29,
31, 34 103 Kamoda, Schaede, Hirata
28 103 Kamoda, Schaede, Hirata, Henn
30, 33 103 Kamoda, Schaede, Hirata, Saito
32 103 Kamoda, Schaede, Hirata, Reinhard
35 103 Kamoda, Schaede, Hirata, Stiel
OPINION
Appellant’s arguments are mainly focused on sole independent claim
22 (generally Appeal Br.), except for the separate argument on dependent
claim 34 (Appeal Br. 10−11). Accordingly, except for claim 34, we decide
each ground of rejection under 35 U.S.C. § 103 on the basis of the
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arguments made in support of patentability of claim 22. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
Upon consideration of the evidence in this Appeal and each of
Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply
Brief, we determine that Appellant has not demonstrated reversible error in
the Examiner’s § 103 rejections (Ans. 3–8). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellants to identify the alleged error in the Examiner’s
rejection). We sustain the Examiner’s § 103 rejections for the reasons
expressed by the Examiner in the Final Office Action and the Answer.
We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
Appellant disputes the Examiner’s determination that it would have
been obvious to incorporate a transfer chill roller into Kamado/Schaede, as
exemplified in Harita (Appeal Br. 6–8). Appellant argues that the
Examiner’s reason for modifying Kamoda to add a transfer chill roller is
conclusory and has no rational basis (Appeal Br. 8–10). Appellant further
argues that the Examiner’s reliance upon Schaede to exemplify a numbering
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group does not cure the deficiency of Kamoda which lacks a numbering
group (Appeal Br. 10). These arguments are reiterated in the Reply Brief.
However, these arguments are not persuasive of reversible error in the
Examiner’s rejection because they fail to adequately consider the prior art as
a whole, and the inferences that one of ordinary skill would have drawn
therefrom, and thus do not adequately address the Examiner’s obviousness
position (see generally Ans.).
First, Appellant has not shown reversible error in the Examiner’s
determination that it would have been obvious, using no more than ordinary
creativity, to add a chill transfer roller as exemplified in Hirata to the
Kamado/Schaede printing press. As the Examiner pointed out, a skilled
artisan would have been well aware of the heat buildup from printing presses
and motivated to include a transfer chill roller in order to dissipate heat
and/or prevent heat accumulation in the printed sheets (see, e.g., Ans. 3−5;
Hirata (translation) ¶¶ 13–15). KSR, 550 U.S. at 418; see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (explaining that under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
“inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ). Further, Kamoda does not discourage or otherwise
teach away from the use of a chill transfer roller therein. Therefore,
Appellant’s argument that that one would not have reconstructed
Kamoda/Shaede by adding a chill transfer roller to arrive at the claimed
invention or that the Examiner has not shown sufficient reason for one of
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ordinary skill combine the applied prior art teachings (Appeal Br. 6–10) is
not sufficient to show reversible error.
As the Examiner also aptly points out, Schaede is only relied upon to
exemplify that it was known to use a numbering group/unit in order to
provide sequenced numbers on security documents/bank notes (Ans. 6–7;
Non-Final Action 4−5). Therefore, no reversible error has been shown in
the Examiner’s determination that it would have been obvious to include
such a numbering group/unit in the printing press of Kamoda which is
designed for producing a banknote.
With respect to dependent claim 34, a skilled artisan would have
reasonably inferred or appreciated that the spaces denoted by the Examiner
in the varnishing unit of the printing press of Kamado were configured to be
accessible by an operator for routine maintenance and for repair in case of
sheet breaks or other problems. Notably, we do not find—and Appellant has
not directed our attention to—any limiting definitions in the Specification,
nor does Appellant provide any persuasive reasoning or credible evidence to
establish that the Examiner’s interpretation of the language of claim 22 is
unreasonable. Therefore, Appellant’s argument that Kamado does not teach
the claimed spaces (Appeal Br. 10−11) is not persuasive of reversible error.
Therefore, in light of the breadth of the claim language and the
teachings of the applied prior art as a whole, we find Appellant’s arguments
are not persuasive of reversible error.
Accordingly, we sustain all of the § 103 rejections of the claims on
appeal.

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DECISION
The decision of the Examiner is affirmed.

In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
22–27, 29,
31, 34 103
Kamoda, Schaede,
Hirata
22–27, 29,
31, 34

28 103 Kamoda, Schaede, Hirata, Henn 28

30, 33 103 Kamoda, Schaede, Hirata, Saito 30, 33

32 103 Kamoda, Schaede, Hirata, Reinhard 32

35 103 Kamoda, Schaede, Hirata, Stiel 35

Overall
Outcome
22–35

No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED