11221044 (B.P.A.I. Mar. 30, 2012)

Ex Parte Mathea

Board of Patent Appeals and InterferencesMar 30, 2012

11221044 (B.P.A.I. Mar. 30, 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. 11/221,044 09/07/2005 Hans Mathea TD 159 4058 27956 7590 04/02/2012 KLAUS J. BACH 4407 TWIN OAKS DRIVE MURRYSVILLE, PA 15668 EXAMINER KOCH, GEORGE R ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 04/02/2012 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 HANS MATHEA ____________ Appeal 2011-002110 Application 11/221,044 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002110 Application 11/221,044 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 through 6. We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to an apparatus for accurately applying and joining sections of a printed first foil to a second foil by controlling the application for one foil in response to a sensor input located along another foil. App. Br. 2-3. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An apparatus for accurately applying to sections of a length (A1) of an unmarked first foil (1) elements (B) and joining the first foil with a second foil (2), said second foil (2) including marks (2a) disposed at a predetermined distance (A2) from one another corresponding to a section length (A1) of said unmarked first foil (1), except for a possible difference, wherein said elements (B) need to be applied to the first foil (1) accurately in a predetermined relation to said marks (2a) of said second foil, said apparatus including a connecting device (3) for joining the two foils (1, 2), a transport device (5) for jointly advancing the two interconnected foils (1, 2) by the predetermined distance (A2), an application device (4) including an activation input (4a) by which an element (B) is applied to the first foil (1) when a signal is applied to the activation input (4a) and a sensor (7) arranged along the second foil so as to sense the presence of the marks (2a) of the second foil (2) and providing a signal to the activation input (4a) of the application device (4) for initiating the application of the element (B) to the first foil (1). The Examiner relied on the following references in rejecting the appealed subject matter: Mathea 200 US 6,164,200 December 26, 2000 Mathea 710 US 6,564,710 B1 May 20, 2003 Coenen et al. US 2003/0234069 A1 December 25, 2003 Appeal 2011-002110 Application 11/221,044 3 Mathea 713 US 2005/0155713 A1 July 21, 2005 Mathea 084 DE 102 43 084 B3 January 29, 2004 Mathea 759 EP 1 000 759 A2 May 17, 2000 Mathea 744 WO 2004/026744 A1 April 1, 2004 The Examiner maintained the following rejections (see generally Answer) from the final office action: 1. Claims 1-2 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of copending Application No. 11/081,464 in view of Coenen. 2. Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mathea 200, Mathea 7591 and Coenen. 3. Claims 3-6 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of copending Application No. 11/081,464 and Coenen as applied above, and further in view of Mathea 200. 4. Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being obvious over Mathea 713 and Coenen. 5. Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being obvious over Mathea 084 and Coenen. 6. Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being obvious over Mathea 744 and Coenen. 7. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mathea 713, Coenen and Mathea 200. 8. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mathea 084, Coenen and Mathea 200. 1 The Examiner relies on U.S. Patent No. 6,564,710 (Mathea 710) as the English equivalent to Mathea 759. Ans. 10-11. U.S. Patent No. 6,564,710 was made of record by the Examiner on February 18, 2009. Appeal 2011-002110 Application 11/221,044 4 9. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mathea 744, Coenen and Mathea 200. Appellant requests review only of the following rejections (App. Br. 3) from the Examiner’s Final Office Action: 1. Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of copending Application No. 11/081,464 and Coenen. 2. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mathea 200, Mathea 759 and Coenen. OPINION Appellant has failed to address the above listed rejections (3) through (9) from the Final Office Action dated December 9, 2009, from which this appeal has been taken. Appellant has therefore waived the right for further appellate review of these rejections. The Board will generally not reach the merits of any issues not contested by the Appellant. See 37 C.F.R. § 41.37(c)(1)(vii) (2010) (“Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown.”); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments the appellant failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). Accordingly, we summarily affirm these uncontested rejections. Rejection under 35 U.S.C. § 103 The dispositive issue for this rejection is: Did the Examiner err in determining that the combination of Mathea 200, Mathea 759 and Coenen would have led one skilled in the art to an apparatus having a sensor Appeal 2011-002110 Application 11/221,044 5 arranged along one foil so as to sense the presence of the marks of said foil to signal activation of an application device for initiating the application of an element on another foil as required by the subject matter of independent claim 1? 2 After thorough review of the respective positions provided by Appellant and the Examiner, we answer this question in the negative and AFFIRM for the reasons presented by the Examiner and add the following for emphasis. Appellant does not dispute the Examiner’s finding that it would have been obvious to use the transport device of Mathea 759 in the apparatus of Mathea 200 to achieve accurate positioning of the foils. App. Br 7-8; Ans. 11-12. The Examiner additionally found that the combination of Mathea 759 and Mathea 200 did not describe a sensor arranged along the second foil so as to sense the presence of the marks of a second foil to signal activation of an application device for initiating the application of the element to the first foil. Ans. 12. The Examiner found that Coenen discloses an apparatus using sensors along one foil to sense the presence of the marks on that foil and provide a signal to activate and application device for initiating the application of the element (adhesive) onto another foil while providing highly controlled registration or position of all components. Id. at 12-13. The Examiner specifically points to sensor 110 located along foil 80 which 2 Appellant has requested review of the rejection of independent claim 1 only and has not advanced separate, substantive arguments against any of the dependent claims 2-6. App. Br 3. Accordingly we limit our discussion to independent claim 1 and dependent claims 2-6 stand or fall with independent claim 1. Appeal 2011-002110 Application 11/221,044 6 senses marks 74 on web 80 to activate application device 115 to apply adhesive to foil 113. Id. at 12-13, 25. The Examiner concluded that it would have been obvious for one skilled in the art to have used the registration system of Coenen in the device of Mathea 200 to achieve highly accurate registration tolerances of the components being joined. Id. at 13. Appellant argued that the present invention differs from the state of the art in that elements B (imprints) are applied to a first foil under the control of a sensor by which the marks applied on the second foil are detected to activate the application device 4 to apply an element B. App. Br. 7. Appellant argued that Coenen does not disclose sensor 106 as controlling applicator 98. Id. at 8. Appellant also disagrees with the Examiner’s logic about the relationship of sensor 110 and applicator 115. Id. at 7. We are unpersuaded by these arguments and agree with the Examiner’s reasoning. Ans. 12-13, 25. We further agree with the Examiner that Coenen discloses the concept of a sensor responsive to marks on one foil to provide a signal to activate the application device to apply an element (adhesive) on another foil. Id. at 25. Appellant’s arguments do not adequately address the Examiner’s reasoning regarding the relationship between sensors and applicator devices. Appellant’s arguments do not consider what the combined teachings of the prior art would have suggested to the skilled artisan. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art). Moreover, a person of ordinary skill in the art would have sufficient skill to determine the appropriate arrangement between sensors and application devices. Thus, we agree with the Examiner’s obviousness determination. Appeal 2011-002110 Application 11/221,044 7 Accordingly, we sustain the Examiner’s rejection of claims 1-6 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 200, Mathea 759 and Coenen. Rejection on the ground of non-statutory obvious-type double patenting The dispositive issue on appeal for the rejection on the ground of non- statutory obvious-type double patenting is: Did the Examiner err in determining that it would have been obvious for one of ordinary skill in the art to have utilized the registration system of Coenen in the apparatus environment of the 464 Application as claimed in order to achieve highly accurate registration tolerances? 3, 4 The Examiner found that it would have been obvious for one skilled in the art to have used the registration system of Coenen in the claimed device of the 464 Application to achieve highly accurate registration tolerances of the components being joined. Ans. 6-7. Appellant argued that there are distinctions between the subject matter of independent claim 1 and the claims of copending Application 11/081,464. App. Br. 6-7. However, Appellant does not present any sufficiently specific arguments indicating that the Examiner erred in concluding that the 3 Copending U.S. Patent Application Serial No. 11/081,464 issued as U.S. Patent No. 7,762,301 to Mathea (Mathea 464) on July 27, 2010. We will refer to the Mathea 464 patent in addressing the rejection based on the ground of nonstatutory obviousness-type double patenting. 4 Appellant has requested review of the rejection of independent claim 1 only and has not advanced separate, substantive arguments against dependent claim 2. App. Br 3. Accordingly we limit our discussion to independent claim 1 and dependent claim 2 stands or falls with independent claim 1. Appeal 2011-002110 Application 11/221,044 8 conflicting claims are not patentably distinct from each other. We agree with the Examiner that Appellant has not adequately addressed the Examiner’s reasoning establishing that it would have been obvious for a skilled artisan to arrive to the subject matter of independent claim 1 by using the registration system of Coenen in the apparatus environment of the 464 Application for the purpose of achieving highly accurate registration tolerances. Ans. 24. Consequently, we sustain the rejection. ORDER The rejection of claims 1 and 2 based on the ground of non-statutory obvious-type double patenting is affirmed. The rejection of claims 1-6 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 200, Mathea 759 and Coenen is affirmed. The rejection of claims 3-6 based on the ground of non-statutory obvious-type double patenting is affirmed. The rejection of claims 1-4 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 713 and Coenen is affirmed. The rejection of claims 1-4 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 084 and Coenen is affirmed. The rejection of claims 1-4 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 744 and Coenen is affirmed. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 713, Coenen and Mathea 200 is affirmed. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 084, Coenen and Mathea 200 is affirmed. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Mathea 744, Coenen and Mathea 200 is affirmed. Appeal 2011-002110 Application 11/221,044 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED bar