11528928 (P.T.A.B. Dec. 11, 2012)

Ex Parte Schmitt

Patent Trial and Appeal BoardDec 11, 2012

11528928 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/528,928 09/28/2006 Manfred Schmitt A-4404 7052 24131 7590 12/11/2012 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER BANH, DAVID H ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 12/11/2012 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MANFRED SCHMITT ________________ Appeal 2010-005513 Application 11/528,928 Technology Center 2800 ________________ Before JOHN A. JEFFERY, JEREMY J. CURCURI, and JENNIFER L. McKEOWN, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 5-7. Claims 2-4 are canceled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (Br.) filed October 5, 2009; and the Examiner’s Answer (Ans.) mailed December 16, 2009. Appeal 2010-005513 Application 11/528,928 2 Claims 1, 5, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated by Jost (US 5,863,037; issued Jan. 26, 1999). Ans. 4-5. Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over Jost and Takahashi (US 2005/0016401 A1; published Jan. 27, 2005). Ans. 5. We affirm. STATEMENT OF THE CASE Appellant’s invention relates to a sheet-guiding device including a suction head, and flexible sheet-guiding elements disposed above a sheet conveying plane. The sheet-guiding elements have a constant length, are disposed so as to be stationary, and are deflectable by a positional change of the suction head. Abstract. Claim 1 is illustrative and reproduced below with the key disputed limitation emphasized: 1. In a sheet-processing machine having a feed region, a sheet- guiding device disposed in the feed region, the sheet-guiding device comprising: a suction head to be set to a format length of a sheet defining a sheet conveying plane; flexible sheet-guiding elements disposed above said sheet conveying plane, said sheet-guiding elements having a constant length, being stationary and being deflected by a positional change of said suction head; guide elements for deflecting said sheet-guiding elements out of a guide plane; a first stationary crossmember, said sheet-guiding elements having a first end disposed on said first stationary crossmember; and a second stationary crossmember, said sheet-guiding elements having a second end disposed on said second stationary cross member. Appeal 2010-005513 Application 11/528,928 3 PIVOTAL ISSUE Under 35 U.S.C. § 102(b), has the Examiner erred by finding that Jost teaches first and second stationary crossmembers, and sheet-guiding elements having a first end disposed on the first stationary crossmember and a second end disposed on the second stationary cross member, as recited in claim 1? ANALYSIS THE ANTICIPATION REJECTION OF CLAIMS 1, 5, AND 6 OVER JOST The Examiner finds, with regard to claim 1, that Jost teaches all claim limitations. Ans. 4. The Examiner maps Jost’s mounts 3 and crossbar 12 to the recited first stationary crossmember, and maps Jost’s extensions 8 to the recited second stationary crossmember. Id. (citing col. 5, ll. 20-60; col. 6, ll. 25-35). It is undisputed that Jost’s crossmember 8 is mounted on and moves with Jost’s suction head 4. Br. 6. Appellant argues that the claimed first and second stationary crossmembers are required to be stationary with respect to a common frame of reference, and that Jost does not disclose the disputed limitation because the second end of the guiding element in Jost is disposed on crossmember 8 which moves with suction head 4. Br. 6-10. Appellant notes that, in Jost, the arrangement results in bandlike bodies 2a having a different length as applicable. Br. 6. In response, the Examiner states [w]hile the useable length of the band-like bodies 2a changes to accommodate the position of the suction head 4, the length of the band-like bodies 2a includes the portion of the band-like Appeal 2010-005513 Application 11/528,928 4 bodies 2a wound on the winding roller 2b and thus the length of the band-like bodies 2a does not change and remains always constant. Ans. 6. The Examiner explains that using the same reference frame is not required in the claim language. Ans. 6-7. The Examiner further explains that crossmember 8 is stationary with respect to suction head 4. Ans. 7. The issue turns on one question: Is Jost’s crossmember 8 a stationary crossmember? We agree with and adopt as our own the Examiner’s findings, with regard to claim 1, that Jost describes all claim limitations. Ans. 4; see also Ans. 6-7. Although Jost’s crossmember 8 moves with Jost’s suction head 4, the Examiner finds, and we agree, that Jost’s crossmember 8 is nonetheless a stationary crossmember as recited in claim 1. Crossmember 8 is stationary with respect to suction head 4. The claim language does not require the first and second stationary crossmembers to be stationary with respect to a common frame of reference as Appellant argues (Br. 6-10). In addition, Jost does not require the bandlike bodies 2a to have different lengths as Appellant argues (Br. 6). In short, the claim language does not preclude a finding that Jost describes all claim limitations. We also note Appellant’s use of the term “stationary” in the description of Figure 4 stating “[o]ne deflection roller 42 is disposed on a spring-loaded lever 43, while the other deflection roller 41 is disposed in a stationary manner on the suction head 18.” Spec. 11:16-19 (emphasis added). Accordingly, Appellant’s own use of the term “stationary” includes the possibility of an element being stationary with respect to the movable suction head. Appeal 2010-005513 Application 11/528,928 5 We are not persuaded that the Examiner has erred in rejecting claim 1. We therefore sustain the Examiner’s rejection of claim 1, as well as claims 5 and 6, which are not argued separately. THE OBVIOUSNESS REJECTION OF CLAIM 7 OVER JOST AND TAKAHASHI We agree with the Examiner’s position, with regard to claim 7, that the cited art collectively teaches or suggests all claim limitations. Ans. 5. Appellant argues that Takahashi does not overcome the deficiencies of Jost. Br. 11. We are not persuaded by Appellant’s arguments for the reasons previously discussed. We therefore sustain the Examiner’s rejection of claim 7. ORDER The Examiner’s decision rejecting claims 1 and 5-7 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED babc