Ex Parte Krispin et al

Patent Trial and Appeal Board

Jul 24, 2013

11528929 (P.T.A.B. Jul. 24, 2013)

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.
11/528,929 09/28/2006 Andreas Krispin A-4408 7051
24131 7590 07/25/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
AFTERGUT, JEFFRY H
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
07/25/2013 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 ANDREAS KRISPIN
and
ALEXANDER WEBER
____________

Appeal 2012-001405
Application 11/528,929
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
MARK NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1 and 3-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Appellants identify the real party in interest as “Heidelberger
Druckmaschinen AG of Heidelberg, Germany.” Appeal Brief filed April 29,
2011 (“Br.”) at 2.
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Appeal 2012-001405
Application 11/528,929

3

Representative claim 1 is reproduced below:
1. A film transfer apparatus, comprising:
a stationary application system [50] for applying
adhesive to some areas of a two-dimensional material including
sheet or web printing materials [1] ;
a stationary transfer system [10] disposed downstream of
said application system [50] and transferring a transfer layer,
adhering to a carrier film [5] by a release layer, under an action
of pressure to the two dimensional material, the transfer layer
adhering to the two-dimensional material [1] only in the areas
coated with the adhesive;
said transfer system including a press cylinder [15] and a
transfer cylinder [30] together forming a common transfer nip
[16];
a transfer film supply roll [21] for storing the carrier film
being provided before said transfer nip [16]; and
a transfer film waste roll [27] for winding up the carrier
film [5] being provided after said transfer nip[16], said transfer
film supply roll [21] and said transfer film waste roll [27]
being disposed above one another and disposed above said
press cylinder [15] and said transfer cylinder[30], said transfer
film supply roll [21], said transfer film waste roll [27], and said
transfer nip [16] all being substantially vertically aligned in a
common plane.
Br. 24 (Claims App’x; italics and drawing reference numerals added).

Appeal 2012-001405
Application 11/528,929

4
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 3-9, and 11-13 as unpatentable over Lappe2 in view
of any one of Seabold,3 Samuelson,4 Fukushima,5 or Ishikawa;6
and
II. Claim 10 as unpatentable over Lappe in view of any one of
Seabold, Samuelson, Fukushima, or Ishikawa, and further in
view of Dettinger.7
Examiner’s Answer entered July 27, 2011 (“Ans.”) 4-22.

DISCUSSION
Unless separately argued pursuant to 37 C.F.R. § 41.37(c)(1)(vii), all
claims subject to Rejection I stand or fall with claim 1, which we select as
representative.
The Examiner found that Lappe describes every limitation of claim 1
but appears to acknowledge that Lappe does not disclose a transfer film
supply roll and a transfer film waste roll to be disposed above one another in
a substantially aligned configuration relative to both a press cylinder and a

2 U.S. Patent 5,565,054 issued October 15, 1996.
3 U.S. Patent 3,969,181 issued July 13, 1976.
4 U.S. Patent 5,316,613 issued May 31, 1994.
5 U.S. Patent 5,507,908 issued April 16, 1996.
6 U.S. Patent 6,450,231 B1 issued September 17, 2002.
7 U.S. Patent 5,167,187 issued December 1, 1992.
Appeal 2012-001405
Application 11/528,929

5
transfer cylinder, where the transfer film supply and the transfer film waste
roll are all in the same plane relative to a nip formed by the transfer cylinder
and the press cylinder. Ans. 4-5. The Examiner further found that Seabold,
Samuelson, Fukushima, and Ishikawa independently disclose the idea of
arranging film supply and take up rollers directly above the applicator in the
same plane. Ans. 6-8. The Examiner concluded from these findings that a
person of ordinary skill in the art would have modified Lappe’s apparatus in
the manner claimed by the Appellants because
it was known . . . to provide the waste take up roll above the
transfer film supply roll and both the waste take up supply roll
and the transfer supply roll were disposed vertically above and
in the same plane as the application means for the transfer
device as evidenced by anyone of Seabold, Samuelson et al,
Fukushima et al or Ishikawa.

Id. at 6.
The Appellants’ principal argument is that “[n]one of the [secondary]
references Seabold, Samuelson, Fukushima, or Ishikawa disclose a device
which has a transfer system including a press cylinder and a transfer cylinder
which together form a common transfer nip” and therefore “do not make up”
for the difference between Lappe and the claimed invention. Br. 9-10
(bolding and underlining omitted). The Appellants also contend that
because Seabold, Samuelson, Fukushima, and Ishikawa describe hand-held
devices in which the transfer systems are moved relative to the printing
substrate, the combination of any one of these references with Lappe would
Appeal 2012-001405
Application 11/528,929

6
result in an apparatus in which the transfer system would move relative to
the printing substrate, not an apparatus with a “stationary transfer system” as
recited in claim 1. Id. at 10-11.
We do not find the Appellants’ arguments persuasive to show
reversible error in the Examiner’s rejection of claim 1. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed
to make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because it has long been the Board's practice
to require an appellant to identify the alleged error in the examiner's
rejections).
The Supreme Court of the United States stated that “when a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag. Pro, Inc., 425 U.S.
273, 282 (1976)).

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01405
/528,929
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fer film
form of a
g a
. 7 to col.
substrate
film 10
18 as
9 and
via two

Appeal 2012-001405
Application 11/528,929

8
tensioning rollers 11 to a smooth-surfaced printing roller 12 that contacts
counter roller 15 at a defined pressure with the substrate 2 as well as the
transfer film 10 positioned therebetween, while the remainder of the transfer
film 10, i.e., separating layer 19, is guided to a collecting roll 14 via an
intermediate roller 13; and then the substrate 2 with the adhered transfer
layer 20 is guided between pressing roller 16 and counter roller 17 in
pressing device 8. Id.
Thus, Lappe’s apparatus differs from the apparatus recited in claim 1
only in that the supply roll 9, collecting roll 14, and the nip defined by the
printer roller 12 and counter roller 15 are not “substantially vertically
aligned in a common plane[,]” as recited in claim 1. Indeed, the Appellants
do not dispute the Examiner’s findings in this regard. Br. 8-22; Ans. 5.
The other references, namely Seabold, Samuelson, Fukushima, and
Ishikawa, all teach transfer film application devices in which the point of
application, the supply roll and the take up roll are disposed over one
another in vertical alignment. For example, Seabold teaches a hand-held
device for dispensing a strip of pressure-sensitive adhesive from a roll of
transfer adhesive comprising a web of pressure-sensitive adhesive supported
on a release liner. Col. 1, ll. 6-9.

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Appeal 2012-001405
Application 11/528,929

10
Given these facts, we discern no reversible error in the Examiner’s
conclusion that a person of ordinary skill in the art would have been
prompted to modify Lappe’s apparatus by disposing supply roll 9, collecting
roll 14, and the nip defined by printing roller 12 and counter roller 15 (i.e.,
the point of application) in vertical alignment in the same plane with the
reasonable expectation of reducing the [lateral] space requirements, as
suggested by Seabold. The Appellants’ opening brief does not direct us to
any persuasive evidence demonstrating that the claimed arrangement
provides any result beyond what would have been expected by a person of
ordinary skill in the art from a rearrangement of Lappe’s rolls. Although
Seabold’s device is a hand-held device rather than a stationary device as
disclosed in Lappe, that fact alone does not defeat the Examiner’s rejection,
because “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one.” KSR, 550 U.S. at 417. See also PerfectWeb
Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness “may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion”).
The Appellants’ contention that the combination of Lappe and the
other references would result in an apparatus in which the transfer system
would move relative to the printing substrate is unavailing because it fails to
Appeal 2012-001405
Application 11/528,929

11
take into account what the collective teachings of the prior art references
would have suggested to one of ordinary skill in the art. That is,
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Appellants argue that “a person of ordinary skill in the art would
expect serious problems to arise from simply conveying disclosure from
such handheld applications to heavy machines which run at high production
speeds, e. g. with regard to vibrations.” Br. 11. That argument, however, is
merely an assertion unsupported by credible evidence (e.g., declaration
testimony) or technical reasoning. Therefore, we find the argument
unpersuasive.
We have considered the Appellants’ other arguments in support of
claim 1 but find them unpersuasive as well for reasons similar to those given
above.
With respect to claim 13, the Appellants contend that “[n]one of the
secondary references disclose a device having an application cylinder, a
transfer film supply roll, and transfer film waste roll” and therefore these
references “do not disclose any information about disposition of an
application cylinder relative to transfer film supply and waste rolls.” Br. 21.
We disagree. Again, “[t]he test for obviousness is not whether the features
Appeal 2012-001405
Application 11/528,929

12
of a secondary reference may be bodily incorporated into the structure of the
primary reference” but rather “what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425.
With respect to the rejection of claim 10, the Appellants rely on the
same arguments offered in support of claim 1. Br. 22. Therefore, we uphold
the rejection of claim 10 for the same reasons.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 3-9,
and 11-13 as unpatentable over Lappe in view of any one of Seabold,
Samuelson, Fukushima, or Ishikawa is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claim 10 as
unpatentable over Lappe in view of any one of Seabold, Samuelson,
Fukushima, or Ishikawa, and further in view of Dettinger is affirmed.
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

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