Ex Parte Milliken

Patent Trial and Appeal Board

Nov 12, 2014

11893674 (P.T.A.B. Nov. 12, 2014)

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.
11/893,674 08/16/2007 Brian James Milliken 6003.1098 6240
23280 7590 11/12/2014
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
11/12/2014 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 BRIAN JAMES MILLIKEN
____________

Appeal 2012-012262
Application 11/893,674
Technology Center 2800
____________

Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the decision of the
Primary Examiner finally rejecting claims 1–7 and 10–19. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Goss International Americas, Inc. (Appeal Br. 2).
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Application 11/893,674

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a web printing press including
printing units and a vacuum cantilever lead roll having a vertical rotational
axis (Abstract). There are three independent claims, which are reproduced
below from the Claims Appendix to the Brief (emphases added):
1. A web printing press comprising:
printing units printing on a web; and
a web control system including a vacuum cantilever lead roll
having a vertical rotational axis and an outer surface contacting the web, the
web control system operating such that the vacuum cantilever lead roll
intermittently applies a tension to the web as the web contacts the outer
surface.

6. A web printing press comprising:
printing units;
a vacuum cantilever lead roll having a vertical rotational axis;
a transducer roll sensing a tension value in the web; and
a controller;
the controller receiving an input of the sensed tension from the
transducer roll; and
the controller controlling a vacuum pressure in the vacuum
cantilever lead roll as a function of the input.

18. A web printing press comprising:
printing units;
a vacuum cantilever lead roll having a vertical rotational axis;
a vacuum pump connected to the vacuum cantilever lead roll;
a transducer roll sensing a tension in the web; and
a device for controlling the vacuum pump, the device including
an automatic mode, the vacuum pump being on or off depending on the
tension sensed by the transducer roll.
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REJECTIONS
The following rejections are appealed:
(1) Claims 1–5, and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Budai2 in view of Germain.3
(2) Claims 6, 10–12, and 15–19 under 35 U.S.C. § 103(a) as being
unpatentable over Budai in view of Germain and Bartlett.4
(3) Claims 13 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Budai, Germain, Bartlett, and Jones.5
DISCUSSION
Rejection (1): The Examiner finds that Budai discloses each of the
elements of claim 1, except that Budai does not disclose the vacuum
cantilever lead roll having a vertical rotation axis (Ans. 3–4 (citing Budai,
FIG. 1, col. 1, l. 5–9, col. 2, ll. 27–31, col. 2, l. 66–col. 3, l. 6, col. 3, ll. 48–
56)). The Examiner further finds that Germain teaches a vacuum cantilever
lead roll having a vertical rotational axis (Ans. 4 (citing Germain, FIG. 1)).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify Budai so that its vacuum cantilever lead roll had
vertical rotational axis as taught by Germain “because it would allow for the
ability to continue processing the web substantially in plane thus overcoming
space constraints in a known and predictable manner” (Ans. 4 (internal
citation omitted)).

2 Budai, U.S. Patent No. 3,827,358, issued August 6, 1974.
3 Germain et al., U.S. Patent Pub. 2004/0242394 A1, published December 2,
2004.
4 Bartlett, U.S. Patent No. 4,052,891, issued October 11, 1977.
5 Jones et al., U.S. Patent Pub. 2004/0177467 A1, published September 16,
2004.
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It is well understood that to reject a claim in a patent application as
obvious under 35 U.S.C. § 103(a), the Examiner must establish a prima facie
case of obviousness, which includes a showing that each of the claimed
limitations are either shown or suggested by the prior art. “In the absence of
a proper prima facie case of obviousness, an applicant who complies with
the other statutory requirements is entitled to a patent.” In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998). In this instance, we agree with Appellant
that the Examiner has not persuasively shown the claim limitation
“intermittently applies a tension” from claim 1 would have been taught or
suggested to a person of ordinary skill in the art.
The Examiner finds that Budai’s disclosure that its vacuum chamber
applies a vacuum of variable strength means that a specific tension (which
the Examiner states is implied by the use of the phrase “a tension”) is only
intermittently applied by Budai—as required by the claim 1—because at
some times the vacuum is at a specific strength (inducing a specific tension),
and at other times is at different strengths (inducing different tensions)
(Ans. 13).
It is well understood that during examination “the PTO must give
claims their broadest reasonable construction consistent with the
specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). In this instance, as noted by Appellant, the Specification
indicates that “intermittent” operation as used in the claims means that the
system is alternatingly on or off, not simply continuously on with variable
strengths (Spec. ¶ 19 (describing the vacuum pump being “on or off
depending on the tension value” so that the vacuum pump can “operate
intermittently”)).
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Accordingly, we determine that that Examiner has not shown that the
art teaches or suggests a system in which a vacuum cantilever lead roll
“intermittently applies a tension” as required by claim 1, requiring reversal
of the rejection of claim, and the claims which depend from it (claims 2–5
and 7).
Rejection (2): With respect to the rejection of claim 6 over Budai,
Germain, and Bartlett, the Examiner makes the same findings regarding
Budai and Germain as are made in connection with Rejection (1) (Ans. 5–6).
The Examiner finds that the combination of Budai and Germain does not
teach a transducer roll sensing a tension value in the web and the controller
receiving an input of the sensed tension from the transducer roll, and that
Bartlett discloses these features (id. at 6). The Examiner further finds that it
would have been obvious to combine these features from Bartlett into
Budai’s system “because it would improve monitoring and measurement of
the web tension . . . allowing for more precise control of the tension . . .
through a known method with predictable results” (id.).
Appellant makes two arguments in favor of the patentability of claim
6. First, Appellant argues that the Examiner has not shown why a person of
ordinary skill in the art would have combined the teachings of Germain with
those of Budai to provide a vacuum cantilever lead roll having a vertical
rotational axis (Appeal Br. 7–10). We do not find Appellant’s argument
persuasive. As noted by the Examiner (e.g. Ans. 13), Germain explicitly
states that the orientation of its device may be altered, suggesting to one of
ordinary skill in the art that the vacuum cantilever lead rolls can be oriented
either horizontally or vertically (or in another orientation). The Examiner
has provided a reasoned explanation of why a person of skill in the art, in
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view of Germain’s teaching that the vacuum cantilever lead roll can be
oriented either horizontally or vertically, might choose to re-orient Budai’s
vacuum cantilever lead roll to a vertical orientation (see, e.g., id. at 13–15
(citing a possible need for adjusting to spatial constraints)). Appellant’s
argument that the claimed vertical orientation would not have been selected
by a person of skill in the art under the circumstances described by the
Examiner does not convince us of any error in the Examiner’s reasoned
explanation.
Second, Appellant also argues that the cited art does not disclose or
make obvious “the controller receiving an input of the sensed tension from
the transducer roll” and “the controller controlling a vacuum pressure in the
vacuum cantilever lead roll as a function of the input” as recited in claim 6
(Appeal Br. 10). We are not persuaded by Appellant’s arguments,
essentially for the reasons set forth by the Examiner at pages 14–17 of the
Answer. We add the following for emphasis.
As noted by the Examiner, Appellant agrees that “Bartlett discloses a
monitoring roll 16 for monitoring tension in a web” and “The output of the
monitoring roll 16 may be used as a feedback signal to correct or modify
web tension as desired through ‘servo motors or other well-known
equipment’” (Ans. 15 (citing Appeal Br. 10)). The Examiner finds that, in
view of Budai’s disclosure of a vacuum applied through a friction feed roll
to control tension, it would have been obvious to use Bartlett’s feedback
system to accurately control Budai’s vacuum control system (Ans. 16).
Appellant has not persuasively refuted this reasoning, as articulated by the
Examiner at pages 16–17 of the Answer. Appellant also argues that “neither
Budai [nor] Bartlett show[s] or disclose[s] a ‘controller controlling a vacuum
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pressure in the vacuum cantilever lead roll as a function of the input’ the
asserted combination would not meet the claim language” (Reply Br. 3).6
As articulated by the Examiner, however, a person of ordinary skill in the art
would have been motivated to use Bartlett’s feedback system to control
Budai’s vacuum control system accurately. Such a combination would
result in the input from the transducer roll being used to modify the vacuum
pressure in the vacuum cantilever lead roll.
Accordingly, Appellant has not persuaded us of reversible error in the
Examiner’s rejection of claim 6. Moreover, because Appellant has not made
independent arguments with regards to Rejection (3)—which addresses
claims 13 and 14, each of which ultimately depend from claim 6—we affirm
the rejection of those claims also.
Independent claim 18 includes the limitation “the vacuum pump being
on or off.” As was the case with claim 1, which includes the limitation “the
vacuum cantilever lead roll intermittently applies a tension,” the Examiner
relies on Budai’s disclosure of a variable vacuum strength as teaching a
vacuum pump being on or off (Ans. 8–9). However, as discussed above in
connection with claim 1 and as argued by Appellant (Appeal Br. 12; Reply
Br. 4), the application of a variable amount of tension by Budai’s system is
not the same as turning the vacuum pump on or off. Therefore, we
determine that the Examiner has not made out a prima facie case of
obviousness, and we reverse the rejection of independent claim 18, and
claim 19, which depends from it.

6 We note that the other than page 1, the pages in the Reply Brief are not
numbered. For ease of reference, we continue numbering the pages after
page 1 sequentially.
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CONCLUSION
We REVERSE the rejection of claims 1–5, 7, 18, and 19.
We AFFIRM the rejection of claims 6 and 10–17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART

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