10861057 (B.P.A.I. Jan. 21, 2009)

Ex Parte Germain et al

Board of Patent Appeals and InterferencesJan 21, 2009

10861057 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PATRICK C. ST. GERMAIN and VERNON C. WICKMAN ____________ Appeal 2007-2861 Application 10/861,057 Technology Center 3700 ____________ Decided: January 21, 2009 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed November 19, 2007, for Rehearing of our Decision, mailed September 13, 2007, wherein we affirmed the Examiner’s decision rejecting claims 1–4. In our Decision, we were unpersuaded by Appellants’ argument that Appeal 2007-2861 Application 10/861,057 the Dufour patent fails to anticipate claims 1and 3 since patentee’s gripper (i.e., gripper finger 130 and gripper bar 132) is carried by deceleration drum 114 rather than a folding cylinder (Dec. 3, last full para.). This argument was considered unpersuasive (1) because claims 1 and 3 are directed to the subcombination of a gripper rather than the combination of a web folding cylinder plus a gripper and alternatively (2) because Dufour’s deceleration drum performs a web folding function and therefore corresponds to the web folding cylinder recited in Appellants’ claims (Dec. para. bridging 3-4). In their Request, Appellants contend that we erred in considering claims 1 and 3 to be directed to a gripper alone rather than a gripper in combination with a web folding cylinder (Req. 1). However, this contention conflicts with and, therefore, is contradicted by the express language of independent claim 1 which recites “[a] gripper for a web folding cylinder” (emphasis added). Appellants also disagree with our alternative position that Dufour’s deceleration drum 114 performs a web folding function (i.e., via seizing device 128, gripper finger 130, and gripper bar 132). In this regard, Appellants state that “any folding requires the co-action of tucker blade 120 and gripper finger 130” (Req. 2). The deficiency of this position is that Appellants have failed to explain why Dufour’s deceleration drum does not perform a folding function even if “any folding requires the co-action of tucker blade 120 and gripper finger 130” (id.). In addition, Appellants contest our affirmance of the anticipation rejection on the grounds that “[g]ripper bar 132 [of Dufour] cannot and does not perform a ‘jaw’ function as called for by the present claims” (Req. 2). Significantly, Appellants do not identify a specific claim 1 recitation which defines “a ‘jaw’ function” (id.) that is considered to not be performed by 2 Appeal 2007-2861 Application 10/861,057 patentee’s gripper bar 132. On the other hand, for the reasons fully detailed in our Decision (Dec. 4, first full para.; see also 5, first full para.), we continue to agree with the Examiner’s finding that gripper bar 132 satisfies the fixed jaw limitation of claim 1. In part D of their Request (Req. 2-3), Appellants seem to reiterate their previously submitted argument that “[Dufour’s] linkage 139 is not the presently claimed cam follower arm rotatably connected to the folding cylinder” (Reply Br. 1). We continue to perceive no persuasive merit in this argument for the reasons expressed in the last paragraph on page 4 of our Decision. Any further arguments presented in the Request concerning the cam follower arm limitation of claim 1 which were not raised in Appellants’ previously filed Appeal and Reply Briefs fail to comply with 37 C.F.R. § 41.52(a)(1) and therefore have not been considered. Finally, Appellants argue that we erred in affirming the § 103 rejection of claims 2 and 4 as being unpatentable over Dufour. In particular, Appellants argue that “the record does not support an obviousness rejection” because “there have been no factual determinations including (1) the scope and content of the prior art (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the pertinent art” (Req. 3). This argument is not relevant to our reason for affirming the rejection of claims 2 and 4. As explicitly stated in our Decision (Dec. 7, first full para.), we affirmed the § 103 rejection of these claims because the involute profile limitations thereof were found to lack novelty over Dufour, and, in support of this affirmance, we expressly cited In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (lack of novelty is the epitome of obviousness). Moreover, 3 Appeal 2007-2861 Application 10/861,057 Appellants’ request does not successfully identify error in our rationale (Dec. para. bridging 6-7) in support of this lack of novelty finding. For the above stated reasons, Appellants’ request for rehearing is denied. DENIED ssl OLSON & HIERL, LTD. 36TH FLOOR 20 NORTH WACKER DRIVE CHICAGO, IL 60606 4