Ex Parte Sposato et al

Patent Trial and Appeal Board

Jul 24, 2018

14047387 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/047,387 10/07/2013
23280 7590 07/26/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
John James Sposato JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6003.1271 1096
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
07/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN JAMES SPOSATO, JR., JEFFREY S. UPCHURCH,
and JARED DAVID KINSON
Appeal 2017-011298
Application 14/047,387
Technology Center 2800
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision rejecting claims 1-10 and 19-28. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
1 Our decision refers to the Specification ("Spec.") filed October 7, 2013, the
Examiner's Final Office Action ("Final") dated October 31, 2016,
Appellants' Appeal Brief ("Appeal Br.") filed March 3 0, 2017, the
Examiner's Answer ("Ans.") dated July 10, 2017, and Appellants' Reply
Brief ("Reply Br.") filed September 6, 2017.
2 According to Appellants, the real party in interest is Goss International
Americas, Inc. Appeal Br. 2.
Appeal 2017-011298
Application 14/047,387
We REVERSE.
STATEMENT OF THE CASE
The invention relates to a cutting cylinder pair for cutting a substrate
in a folder of a printing press, wherein the cutting cylinder pair includes a
cutting cylinder and an anvil cylinder, the cutting cylinder having a knife
and a binding pin adjacent the knife and the anvil cylinder having a cutting
rubber engaging the knife and the binding pin as the cylinders rotate (Spec. ,r
5). The binding pin is positioned on the cutting cylinder to impart a dimple
to a substrate passing between the cutting and anvil cylinders (id.).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. A cutting cylinder pair for cutting a substrate in a folder of a
printing press, comprising
a cutting cylinder, the cutting cylinder including a knife
and a binding pin adjacent the knife in a circumferential
direction of the cutting cylinder;
an anvil cylinder, the anvil cylinder including a cutting
rubber, the cutting rubber engaging the knife and the binding
pin as the cutting cylinder and anvil cylinder rotate, the binding
pin positioned on the cutting cylinder to impart a dimple to a
substrate passing between the cutting cylinder and anvil
cylinder;
wherein the height of the binding pin is adjustable
independent of the height of the knife.
Independent claim 21 similarly recites a cutting cylinder pair, wherein
the height of the binding pin and the knife are independently adjustable.
Independent claim 27 similarly recites a cutting cylinder pair, wherein the
cutting cylinder is configured and arranged to accommodate the place of the
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Application 14/047,387
binding pin and the knife at multiple angles between each other when the
binding pin is in an operational position.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
1. Claims 27 and 28 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
2. Claims 1-3, 8-10, and 19 under 35 U.S.C. § I02(b) as
anticipated by Spatz; 3
3. Claims 4 and 5 under 35 U.S.C. § I03(a) as unpatentable over
Spatz in view ofWhitten; 4
4. Claims 6 and 7 under 35 U.S.C. § I03(a) as unpatentable over
Spatz in view of Held; 5
5. Claim 20 under 35 U.S.C. § I03(a) as unpatentable over Spatz
and Held, and further in view of Bernard; 6
6. Claims 1-3, 6-10, 19, and 21-28 under 35 U.S.C. § I03(a) as
unpatentable over Tomlin7 in view ofHartmann8 and Spatz; and
7. Claim 20 under 35 U.S.C. § I03(a) as unpatentable over
Tomlin, Hartmann, and Spatz, and further in view of Bernard.
3 Spatz et al., US 2011/0140340 Al, published June 16, 2011 ("Spatz").
4 Whitten, US 6,551,227 Bl, issued April 22, 2003.
5 Held et al., US 5,367,936, issued November 29, 1994 ("Held").
6 Bernard et al., US 2007/0289461 Al, published December 20, 2007
("Bernard").
7 Tomlin, US 2,026,443, issued December 31, 1935.
8 Hartmann et al., US 7,036,413 B2, issued May 2, 2006 ("Hartmann").
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Application 14/047,387
ANALYSIS
Rejection 1: 35 US.C. § 112,first paragraph, written description
The Examiner rejects claims 27 and 28 for failing to comply with the
written description requirement, finding the limitation "wherein the cutting
cylinder is configured and arranged to accommodate the placement of the
binding pin and the knife at multiple angles between each other when the
binding pin is in an operational position" was not described in the
Specification in such a way as to reasonably convey to one skilled in the art
that the Inventors had possession of the invention at the time of filing (Final
3). Appellants submit that this limitation is supported by an adequate
description in the Specification, paragraphs 9, 30, and 34 (Appeal Br. 5). In
addition, Appellants urge that Figure 2A clearly depicts the binding pin at
one angle relative to the knife and Figure 2B clearly depicts the binding pin
at a different angle relative to the knife (id.). The Examiner acknowledges
that the Specification and figures disclose and support a cylinder with the
binding pin and the knife being at the same angle in one embodiment and
being at different angles in another embodiment (Final 3; Ans. 2-3).
In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent upon the Examiner to
establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellants had
possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not require
literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re
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Wertheim, 541 F.2d 257,262 (CCPA 1976). Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that an appellant had possession of the concept of what is claimed.
In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973).
Here, the Examiner fails to explain why Appellants' disclosure of two
embodiments of the cutting cylinder with the binding pin and knife arranged
at different angles relative to each other does not demonstrate possession of
a cutting cylinder that accommodates the placement of the binding pin and
knife at multiple angles relative to each other. As such, the Examiner fails
to carry the burden of establishing that the originally-filed disclosure would
not have reasonably conveyed to one having ordinary skill in the art that
Appellants had possession of the concept of what is claimed. Accordingly,
we do not sustain this rejection.
Rejection 2: Anticipation by Spatz
The Examiner finds Spatz teaches a cutting cylinder pair including,
inter alia, cutting cylinder 21, knife 23, and perforating knife 24 having
perforating tips 25 that can perform either perforation or stamping, wherein
the height of the binding pin is adjustable independent of the height of the
knife as recited in claim 1 (Final 4 ). The Examiner notes that claim 1 does
not "require a mechanism for actuating or adjusting the binding pin or the
knife during the use, on press, of the cylinder" (Ans. 4). Nor, the Examiner
notes, does claim 1 require a specific time at which the adjustment happens,
or a specific type or amount of adjustment (id.). As such, the Examiner
construes claim 1, under the broadest reasonable interpretation, as merely
requiring that the binding pin is capable of being adjusted (id.). The
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Examiner finds Spatz's perforating tips 25 are "considered to be capable of
being adjusted to a height independent of the height of the cutting knife 23
because they are separately provided to the recess and separately fastened as
they can provided either adjacent or with a spacer therebetween" (id. at 4--5).
Appellants argue that Spatz fails to disclose that the height of the
binding pin is adjustable independent of the height of the knife (Appeal Br.
7). Appellants urge that Spatz fails to discuss or disclose, expressly or
inherently, how cutting knife 23 and perforating knife 24 are mounted in
cylinder 21 (id.). In particular, Appellants contend that Spatz merely
discusses perforating or stamping, without disclosing whether the knife and
binding pin are mounted into the recess in cylinder 21 separately or together,
or whether they are commonly or separately fastened (id.). Appellants also
contend that the fact that two components are separately fastened in no way
implies that the height of one component is adjustable independent of the
other, or that their heights are even adjustable (id. at 7-8; Reply Br. 2).
Appellants' arguments are persuasive of reversible error in the
Examiner's finding that Spatz teaches a binding pin whose height is
independently adjustable relative to the knife as required by claim 1.
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (anticipation is established
when a single prior art reference discloses all features of the claimed
invention). Although there is no dispute that claim 1 merely requires a
binding pin whose height is adjustable independent of the height of the
knife, the Examiner fails to direct our attention to any disclosure in Spatz
that the height of binding pin or tips 25 are necessarily independently
adjustable independent of the height of knife 23. As Appellants correctly
contend, the fact that cutting knife 23 and perforating knife 24 may be
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Application 14/047,387
separately fastened or mounted in cutting cylinder 21 alone does not
establish that this feature is necessarily taught or inherent in Spatz. An
inherent characteristic must be inevitable, and not merely a possibility or
probability. In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012)
("[i]nherency ... may not be established by probabilities or possibilities").
The Examiner does not establish that Spatz' binding pin or tips 25 are
inevitably height adjustable independent of the height of knife 23. Absent
such, the Examiner reversibly erred in finding anticipation of claim 1 by
Spatz. Each of claims 2, 3, 8-10 and 19 are dependent on claim 1 and
require this same limitation. Accordingly, we do not sustain the Examiner's
anticipation rejection of claims 1-3, 8-10, and 19 by Spatz.
Rejection 3-5: Obviousness based on Spatz
Appellants argue that none of the secondary references remedy the
deficiency identified above with regard to Spatz (Appeal Br. 8-9). We agree
and, therefore, do not sustain the Examiner's obviousness rejections based
on Spatz as the primary reference.
Rejections 6 and 7: Obviousness based on the combination of Tomlin,
Hartmann, and Spatz
The Examiner finds Tomlin teaches a cutting cylinder pair for cutting
a substrate in a folder of a printing press, comprising cutting cylinder 30
including cutting knife 33, 34 and binding pins 55, 56, 57, and anvil cylinder
29 including cutting rubber 122 engaging knife 33, 34 as the cylinders
rotate, wherein the height of binding pins 55, 56, 57 is adjustable
independent of the height of knife 33, 34 (Final 9). However, the Examiner
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finds Tomlin fails to teach positioning binding pins on the cutting cylinder
(id.). For this feature, the Examiner finds Hartmann teaches binding pins
positioned on a cutting cylinder as an alternative to binding pins mounted on
the anvil cylinder (id.). Therefore, the Examiner concludes that it would
have been obvious to mount Tomlin's binding pins on the cutting cylinder
because such an arrangement was a known alternative configuration for
binding pins and the knife for a cutting cylinder "with the predictable result
of cutting and conveying the paper" (id. at 9--10).
The Examiner further acknowledges Tomlin, as modified in view of
Hartmann, fails to teach that the binding pin positioned on the cutting
cylinder imparts a dimple to substrates passing between the cylinders and the
cutting rubber engages the knife and binding pin as the cylinders rotate
(Final 10). The Examiner finds Spatz teaches these features and concludes it
would have been obvious to further modify Tomlin's binding pin to impart a
dimple on substrates passing between the cylinders "because it allows the
paper sheets to be connected to each other in a detachable manner,
preventing fanning out and damage when the paper product is moved" and
because engagement between the cutting rubber and the knife and binding
pin is a well-known configuration allowing a single rubber to be used for
both (id. at 10-11).
Appellants contend that Tomlin's binding pins 55, 56, 57 are located
on collect cylinder 29 and function to hold the substrate sheets against this
cylinder for folding and collecting modes (Appeal Br. 11 ). As such,
Appellants argue that the ordinary artisan would not modify Tomlin to
mount the binding pin on the cutting cylinder as the Examiner proposes
"because such a modification would completely frustrate the purpose of the
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pins in Tomlin" and render Tomlin inoperative (id. at 11-12, emphases
removed). Appellants further argue that Hartmann's suggestion of using
pins on the cutting cylinder is in addition to, and not an alternative to, pins
on the collect cylinder (id. at 12). Appellants urge that Hartmann's pins are
used in an entirely different way and context than Tomlin's (id.). According
to Appellants, when Hartmann's device is in the disposal mode for diverting
waste substrate, binding pins can be used on the cutting cylinder because
substrate sheets are not transferred to the collect cylinder (id.). As such,
Appellants argue that there is no apparent reason to provide pins on
Tomlin's cutting cylinder 30, which solely operates to cut substrate sheets
for folding and collect cylinder 29 (id.). Moreover, Appellants argue that the
ordinary artisan would not modify Tomlin to provide the binding pins
positioned on the cutting cylinder to impart a dimple to substrate sheets
passing between the cylinders because such a modification would push
sheets away from the cutting cylinder thereby destroying the purpose of
Tomlin's pins to hold the sheets against the cylinder (id.; see also Reply Br.
3--4).
Appellants' arguments are persuasive of reversible error. Where the
combined teachings of references would produce a seemingly inoperative
device, those references may be said to teach away from their combination.
In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007); see
also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); In re Sponnoble, 405
F.2d 578, 587 (CCPA 1969). When the prior art teaches away from a
combination, that combination is more likely to be nonobvious, KSR Int'!.
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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Here, the problem with the Examiner's proposed combination is that,
in modifying Tomlin in view of Hartmann, the Examiner finds that the
additional binding pins on the cutting cylinder would function to grasp or
hold substrate to the cutting cylinder in normal operation (Ans. 7), yet fails
to explain how these binding pins would continue to operate as such when
further modified in view of Spatz to impart a dimple rather than grasp.
Although the binding pins on the collect cylinder in Tomlin would continue
to operate as the Examiner suggests, the additional binding pins on the
cutting cylinder as suggested by Hartmann would be inoperable for the
purpose the Examiner relies on in modifying Tomlin when further modified
from grasping to dimpling in view of Spatz. In this regard, the Examiner
fails to direct our attention to any teaching in the prior art that suggests
Hartmann's additional binding pins provided on Tomlin's cutting cylinder
should be modified to impart a dimple to thereby "supplement the holding of
the paper for registration at the nip and therefore assist in the cutting and
conveying of the paper" (Ans. 8).
The Examiner has the initial duty of supplying the requisite factual
basis and may not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See KSR Int 'l Co.,
550 U.S. at 418 ("To facilitate review, [the obviousness] analysis should be
made explicit."); see also, In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR Int 'l Co., 550 U.S. at 418.
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Accordingly, we do not sustain the Examiner's obviousness rejection
of claims 1-3, 6-10, 19, and 21-28 over the combination of Tomlin,
Hartmann, and Spatz. The Examiner does not rely on Bernard to remedy the
deficiencies in the combination of Tomlin, Hartmann, and Spatz discussed
above. Therefore, we likewise do not sustain the Examiner's obviousness
rejection of claim 20 over the combination of Tomlin, Hartmann, Spatz, and
Bernard.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1-10 and 19-28 is reversed.
REVERSED
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