Ex Parte Elkinson et al

Patent Trial and Appeal Board

Jan 19, 2016

10980583 (P.T.A.B. Jan. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/980,583 11103/2004
23280 7590 01/21/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Brian Robert Elkinson
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.
6003.1005 6607
EXAMINER
MORRISON, THOMAS A
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
0112112016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN ROBERT ELKINSON, DANIEL MATTHEW PERDUE,
and LAWRENCE EDWARD ZAGAR
Appeal2013-009155
Application 10/980,583
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the Final
rejection of claims 1-5, 7-10, and 18-24. 1 We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 The Appellants have indicated that claims 11-17 have been canceled (App.
Br. 2).
Appeal2013-009155
Application 10/980,583
THE INVENTION
The Appellants' claimed invention is directed to folder superstructures
for web printing presses (Spec. i-f 1 ). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A printing press comprising:
printing units printing on a web, the web being slit and
formed into a ribbon bundle;
a former folding the printed ribbon bundle;
a first nip roll located downstream of the former and
having a compressible outer layer; and
a second nip roll forming a nip with the first nip roll.
THE REJECTIONS
The following rejections are before us for review: 2
1. Claims 1-3, 5, and 18-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Weis (US 6,588,739 Bl, iss. July 8, 2003) and
Bredenberg (US 5,904,094, iss. May 18, 1999).
2. Ciaim 4 is rejected under 35 U.S.C. § 103(a) as unpatentabie
over Weis, Bredenberg, and Cote (US 2002/0063541 Al, pub. May 30,
2002).
3. Claims 7-8 and 23-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Weis, Bredenberg, and Rimai (US 6,556,798 B2, iss. Apr.
29, 2003).
4. Claims 9, 10, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Weis, Bredenberg, and Majaniemi (US 4,484,982, iss.
Nov. 27, 1984).
2 The Examiner withdrew the rejection of claims 22 and 24 under 35 U.S.C.
§ 112, second paragraph, as being indefinite (Ans. 9).
2
Appeal2013-009155
Application 10/980,583
FINDil-.JGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Bredenberg fails to teach a nip roll having "a compressible outer layer"
(App. Br. 5---6; see also Reply Br. 2-3).
In contrast, the Examiner has determined that Bredenberg teaches nip
rollers 12, 14 with compressible outer layers 20, 26, respectively (Ans. 2-3,
10 (citing Bredenberg, col. 3, 11. 30-35 and Fig. 2)).
We agree with the Appellants because Bredenberg teaches that the
outer layers 20, 26 are made from materials that the Appellants'
Specification teaches are incompressible. Specifically, the Specification
states: "Nip rolls with urethane or rubber outer layers are known. These
rubber or urethane coatings are incompressible, as no air, microspheres or
other gas inclusions are added to make them compressible" (Spec. i-f 3).
Bredenberg teaches that coating 20 is a "resilient material, as e.g., rubber or
urethane" (Bredenberg, col. 3, 11. 17-18), and Bredenberg similarly teaches
that coating 26 is "a continuous rubber or polyurethane sleeve" (id. at col. 3,
11. 28-30). Bredenberg also teaches that the nip rollers 12, 14 may be
"formed of compliant material, such that the deformation of the coating 20
of the first roller 12 mirrors the deformation of the coating 26 of the second
roller 14" (id. at col. 3, 11. 30-35). However, Bredenberg is silent regarding
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2013-009155
Application 10/980,583
the coatings 20, 26 being compressible, and there is no teaching in
Bredenberg that coatings 20, 26 are made from rubber or urethane materials
having air, microspheres, or other gas inclusions. Thus, Bredenberg's
coatings 20, 26 would not be a "compressible outer layer" when the claim is
read in light of the Specification and given its broadest reasonable
interpretation. For these reasons, the rejections of claim 1 and its dependent
claims are not sustained.
CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner's rejections of claims 1-5, 7-10, and 18-24 are
reversed.
REVERSED
rvb
4