Ex parte Slabowski

Board of Patent Appeals and Interferences

Jul 21, 1998

08280369 (B.P.A.I. Jul. 21, 1998)

Application for patent filed July 26, 1994.1
An amendment under Rule 116 was entered, but did not result2
in the allowance of any claims, although it overcame a rejection
under 35 U.S.C. § 112, second paragraph.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAN SLABOWSKI
__________
Appeal No. 97-3214
Application No. 08/280,3691
__________
ON BRIEF
__________
Before COHEN, ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1-8, which constitute all of the claims of
record in the application. 2
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Application No. 08/280,369
2
The appellant's invention is directed to a transversely
movable thread sled for use in a slitting line. The subject
matter before us on appeal is illustrated by reference to claim
1, which has been reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Graf et al. (Graf) 3,448,645 Jun. 10, 1969
Brand 3,795,166 Mar. 5, 1974
Matsunaga 4,567,799 Feb. 4, 1986
THE REJECTION
Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Matsunaga in view of Graf and Brand.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The problem upon which the appellant’s inventive efforts are
focused concerns replacement of the arbors used in the continuous
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Application No. 08/280,369
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slitting of rolls of coiled material in a manner which minimizes
the disruption to the material pass line. As explained in the
opening pages of the specification, modern slitting lines include
a slitter having multiple arbors. These are preceded in the line
by a thread sled, which receives the sheet material from an
uncoiler and passes it in proper alignment to the slitter. It is
necessary periodically to remove the arbors for servicing, and
for this reason the arbors are pivotally mounted so they can be
swung into and out of the active position in the material pass
line in a horizontal arc. The thread sled, when in its active
position, interferes with the pivotal movement of the arbors, and
in the prior art the thread sled is moved upstream along the
material pass line to get it out of the way of the arbors. This
prior art system is disclosed in the Matsunaga patent, which the
examiner has cited as the primary reference. In the appellant’s
invention, the thread sled is moved transversely out of the way
of the pivotal path of the arbors. This offers the advantage of
shortening the length of the material pass line.
As manifested in claim 1, the appellant’s invention
comprises, inter alia,
mounting means for mounting said sled for movement
relative to said slitting arbors and said uncoiler,
said mounting means including guide means for guiding
Appeal No. 97-3214
Application No. 08/280,369
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said sled along a rectilinear path extending in a
direction other than along the material pass line, and
means for moving said sled along said path between said
active and inactive positions,
with the active position having previously been defined as being
“in” the material pass line and the inactive position as being
“out of” the material pass line.
The examiner has rejected this claim as being unpatentable
over Matsunaga in view of Graf and Brand. It is axiomatic that
the test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have
been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (BPAI 1985). To this end, the requisite
motivation must stem from some teaching, suggestion or inference
in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the
appellant's disclosure. See, for example, Uniroyal, Inc. v.
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Application No. 08/280,369
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Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
As has been admitted by the examiner, Matsunaga fails to
disclose or teach moving the thread sled perpendicular to the
material pass line. In this regard, the examiner points out
that Graf teaches displacing a tool station component in a
direction transverse to the material pass line, and Brand teaches
displacing a material conveying means transversely to the tools
operating upon it. From these teachings, the examiner concludes
that it would have been obvious to one of ordinary skill in the
art to modify the Matsunaga system so that it meets the terms of
claim 1. We do not agree.
Graf discloses a system for punching sheet material with a
plurality of tools carried by a rotatable tool holder (Figure
11). The tool holder is transversely movable across the material
pass line, and advancement of the sheet along the pass line
coupled with transverse positioning of the proper tool results in
punching in the desired location. However, as we understand the
Graf machine, while the tool holder is movable transversely, it
does not move to an “inactive” position, that is, “out of” the
material pass line. It would appear that, at best, the
transverse movement of the tool holder merely allows one of the
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Application No. 08/280,369
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tools to be rotated to a position at the outer edge of the pass
line, whereupon it could be accessed for service while the other
tools remain over the active position (see Figure 11). It also
is material to our analysis that Graf is not concerned with the
problem of moving a component out of the material pass line to
provide an unobstructed path for another to be moved in and out.
Brand teaches moving the coils of sheet material being fed
to an operating station transversely with respect to a stationary
work station. This amounts to the opposite of the theory of
operation of appellant’s invention. Also, the problems solved by
Brand differ from those of the appellant’s invention.
Matsunaga solves the same problem as the appellant’s
invention, but does so by moving the thread sled upstream along
the material pass line, rather than transversely, as in the
appellant’s invention. We fail to perceive any teaching,
suggestion or incentive in the applied prior art which would have
led one of ordinary skill in the art to modify the Matsunaga
system by moving the thread sled transversely “out of” the
material pass line to an “inactive position” with respect
thereto. Graf’s teaching of moving a punch tool transversely
across a material pass line would not, in our view, have
suggested to one of ordinary skill in the art that the movement
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of the Matsunaga thread sled be altered to the arrangement
recited in claim 1. The same can be said for Brand. The mere
fact that the prior art structure could be modified does not make
such a modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). From our perspective,
suggestion for combining the references in the manner proposed by
the examiner is found only in the hindsight accorded one who
first viewed the appellant’s disclosure. This, of course, is
impermissible. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
It is our opinion that the teachings of the references
applied fail to establish a prima facie case of obviousness with
regard to the subject matter of claim 1. Therefore, the
rejection of independent claim 1 and, it follows, of dependent
claims 2-8, cannot be sustained.
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Application No. 08/280,369
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The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 97-3214
Application No. 08/280,369
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