Ex Parte Fassbind

Board of Patent Appeals and Interferences

May 21, 2012

11252253 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/252,253 10/18/2005 Adrian Fassbind 40424-222033 6588
26694 7590 05/21/2012
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
ASHLEY, BOYER DOLINGER
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
05/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ADRIAN FASSBIND
________________

Appeal 2010-006512
Application 11/252,253
Technology Center 3700
________________

Before KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006512
Application 11/252,253

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claim 1. Appellant’s representative presented oral argument on
May 3, 2010. Claims 3-13 have been withdrawn (App. Br. 5). We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

The Claimed Subject Matter
The claimed subject matter is directed to a method of trimming
multiple edges of a print product wherein the steps of feeding, pressing
down, and releasing are time-variable while the step of trimming includes
knife movement which is substantially constant in duration. Claim 1, the
only claim on appeal, is reproduced below:
l. A method for trimming multiple edges of a print product
over the course of several processing steps of a processing cycle
using a trimming apparatus, the method comprising the
following processing steps:
feeding the print product from a stacking device to a
trimming device using a feeding device;
pressing the print product onto a trimming table using a
pressing die;
trimming the print product positioned on the trimming
table using knives associated with the trimming device; and
releasing the pressing die from the trimming table and
removing the trimmed print product from the trimming table;
wherein the pressing die and the knives are driven by
separate drives that are controlled by a control unit;
further wherein the steps of feeding, pressing down, and
releasing are time-variable, while the step of trimming includes
a respective knife movement for trimming the print product,
which is substantially constant in duration and includes a
forward stroke and a backward stroke.

Appeal 2010-006512
Application 11/252,253

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References Relied on by the Examiner
Sarring US 3,722,336 Mar. 27, 1973
Hartlage US 4,505,173 Mar. 19, 1985
Lindee US 6,484,615 B2 Nov. 26, 2002

The Rejection on Appeal
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hartlage, Lindee and Sarring (Ans. 3).

ANALYSIS
Claim 1 requires the steps of feeding, pressing down and releasing be
time-variable while movement of the trimming knives remains substantially
constant in duration. The Examiner relies primarily on Hartlage for teaching
the limitations of claim 1 but the Examiner relies on Lindee and Sarring for
teaching what the Examiner describes as being “old and well known” in the
art (Ans. 3-4). The Examiner relies on Lindee for teaching that it is known
to provide independent drive mechanisms for all moveable portions of a
cutting apparatus and that these independent drive mechanisms include the
use of variable speed motors “for the feeding and clamping of products”
(Ans. 3). The Examiner concludes that it would have been obvious “to have
modified Hartlage to incorporate the teachings of Lindee to provide
independent variable speed motors to the feed mechanism, the pressing
mechanism and the trimming knives” because variable speed motors “are
capable of providing time variable outputs or outputs of a constant duration”
(Ans. 3-4). Doing so, according to the Examiner, “would allow the process
to slow down or speed up depending on the demand” while still “allowing
independent functions to function properly” (Ans. 4).
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The Examiner relies on Sarring for teaching that it is “old and well
known in the cutting art to have the trimming operation be constant in
duration such that the same trimming stroke can be used” no matter the
thickness of the material being trimmed (Ans. 4). The Examiner concludes
that it would have been obvious “to have modified Hartlage to incorporate
the teachings of Sarring to make the trimming operation constant in
duration” so that “work pieces of all different sizes could be cut by the
device” (Ans. 4). The Examiner emphasizes that Sarring teaches that one
skilled in the art would understand that feed speed is dependent on the
desired rate of cutting and that pressing and releasing rates are dependent on
the thickness of the product, however the cutting device “always has to
move the same distance no matter the size of the workpiece and therefore
would be constant in duration” (Ans. 4).
Appellant initially contends that no reasonable combination of
Hartlage, Lindee and Sarring would disclose that the step of “feeding,
pressing down and releasing are time-variable, while the step of
trimming…is substantially constant in duration” (App. Br. 9, see also Reply
Br. 4). Appellant acknowledges the Examiner’s reliance on Lindee for
disclosing “variable speed D.C. servo motors” for operating the trimming,
stacking and feeding operations of Lindee but that such disclosure “does not
necessarily result in the steps performed by them being ‘time-variable,’ as
claimed” (App. Br. 9). According to Appellant, this is because Lindee
discloses the trimming operation being “preferably driven at a constant rate
or rotation” albeit by a variable speed motor (App. Br. 9 citing Lindee 8:1-
17; see also 5:45-50). Appellant reasons that “Lindee’s disclosure of
variable speed D.C. motors would not lead one of ordinary skill in the art to
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Application 11/252,253

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make Hartlage’s alleged ‘steps of feeding, pressing down, and releasing’
time variable” (App. Br. 9, see also Reply Br. 5).
Appellant’s do not employ the claim term “time-variable” outside its
use in claim 1 nor do Appellant’s express a definition for this term other
than how it would ordinarily be construed, i.e., to indicate that time may
vary. Hence, Appellant’s employment of “time-variable” with respect to the
feeding, pressing down and releasing steps is indicative that the timing of
these steps can be varied. Lindee specifically teaches the use of variable
speed motors for feeding and other operations and the Examiner finds that
variable speed motors are capable of providing time variable outputs (Lindee
5:45-57; Ans. 3-4). Appellant does not indicate how Lindee’s variable speed
motors are incapable of providing time variable operations nor how variable
speed motors are incapable of being applied to feeding and other operations
as taught by Lindee. Accordingly, Appellant’s contention that the
combination of Hartlage, Lindee and Sarring fail to disclose a time-variable
operation is not persuasive (App. Br. 10, Reply Br. 5).
Appellant also contends that Sarring “teaches away from the claimed
invention” of the trimming step being “substantially constant in duration”
(App. Br. 10, Reply Br. 5). An assertion of “teaching away” requires a
showing where the reference actually criticizes, discredits or otherwise
discourages investigation into the claimed solution. No such showing is
forthcoming. The Examiner relies on Sarring for its discussion that, unlike
Sarring’s invention, it is known for trimming operations to be constant in
duration (Ans. 4 referencing Sarring 45:40-42). While Sarring discloses
certain improvements, we decline to find that Sarring disclosure would
discourage one from utilizing a substantially constant duration trimming
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Application 11/252,253

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step. Accordingly, Appellant’s contention that Sarring “teaches away” due
to Sarring’s improvement over known fixed-speed blades is not persuasive.
Appellant further contends that Lindee is non-analogous art (App. Br.
11-12). A reference is analogous art if it either is in the field of the
applicant’s endeavor or is reasonably pertinent to the particular problem
with which the inventor was concerned. Appellant and the Examiner present
competing descriptions of the field of endeavor1 however, Appellant does
not dispute the Examiner’s identification of the problem addressed by the
inventor2. The Examiner finds that “Lindee is also concerned with
increasing the control of a cutting process” which is based on Appellant’s
own statements regarding Lindee (Ans. 6 referencing Appellant’s
arguments, pg. 12, lines 9 and 10). Assuming arguendo that the respective
fields of endeavor are different, Appellant does not dispute the Examiner’s
conclusion that the problem addressed by Lindee is reasonably pertinent to
the particular problem with which the inventor was concerned. Accordingly,
Appellant’s contention that Lindee is non-analogous art is not persuasive. In
view of the record presented, we sustain the Examiner’s rejection of claim 1.

1 Appellant contends that “[c]laim 1 is directed to a ‘method for trimming
multiple edges of a print product.’ In contrast, Lindee is directed to a
rotating blade for cutting slices of meat or cheese from loaves. (See Lindee
at col. 2, 1. 66 to col. 3, l. 1.)” (App. Br. 11-12). On the other hand, the
Examiner states that “both the instant invention and Lindee are slicing
devices involving steps of feeding, cutting, clamping, and dispensing which
is in the applicant’s field of endeavor” (Ans. 6).
2 “Appellant is concerned with increasing the control of the cutting process
to make the process more efficient” (Ans. 6, see also Spec. ¶¶ [0029] and
[0033]).
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DECISION
The Examiner’s rejection of claim 1 is sustained.
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

MP