Ex Parte St. Ours et al

Patent Trial and Appeal Board

Mar 25, 2015

12072947 (P.T.A.B. Mar. 25, 2015)

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.
12/072,947 02/29/2008 Joseph Adrian St. Ours 6003.1116 6097
23280 7590 03/25/2015
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
03/25/2015 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 JOSEPH ADRIAN ST. OURS, LOTHAR JOHN SCHROEDER,
BARRY MARK JACKSON, and DIETER THEODOR EBERT
____________

Appeal 2013-002869
Application 12/072,947
1

Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 4 and 6 through 23. We have jurisdiction under 35 U.S.C.
§ 6.
Appellants’ invention is directed to a printing press and a method for
changing the velocity of printed products in a product stream. App. Br. 4–5.
Claim 1 illustrates the subject matter on appeal and is reproduced below:

1
According to Appellants, the real party in interest is Goss International
Americas, Inc. App. Br. 2.
Appeal 2013-002869
Application 12/072,947

2
1. A printing press comprising:
a print unit printing a stream of printed products, the
printed products having a first pitch;
a controller; and
a pitch changing device including;
an upper roller mounted on an upper axle;
a lower roller mounted on a lower axle, the upper
and lower rollers forming a roller nip, the nip receiving the
stream of printed products; and
at least one motor connected to the controller, the
at least one motor driving the upper and lower rollers in
opposite directions, the controller varying the velocity of the
nip and the printed products using an electronic cam velocity
profile so as to alter the first pitch, and
a sensor connected to the controller and located
downstream of the nip, the sensor detecting a final pitch
between the printed products, the final pitch being different
than the first pitch.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Buhayar US 3,827,545 Aug. 6, 1974
Alper US 4,451,027 May 29, 1984
Wingate US 6,176,485 B1 Jan. 23, 2001
Pollock US 6,561,507 B1 May 13, 2003
Cote US 2007/0158903 A1 July 12, 2007

Appellants (App. Br. 5) request review of the following rejections
from the Examiner’s final office action:
I. Claims 1–4, 8–10, 12–17, and 20–23 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cote, Buhayar, and Alper.
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Application 12/072,947

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II. Claims 6, 7, and 19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cote, Buhayar, Alper, and Wingate.
III. Claims 11 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cote, Buhayar, Alper, and Pollock.

OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejection of claims 1–4,
8–10, 12–17 and 20–23 (Rejection I) for the reasons presented by the
Examiner.
Independent claims 1 and 12 are generally directed to a printing unit
and method of using it, where the printing unit includes a pitch changing
device comprising sets of rollers that vary the pitch between printed products
through the use of a velocity profile.
2

The Examiner found Cote teaches a printing press comprising a motor
driven pitch changing device that transfers printed products from a print unit
to other equipment located downstream for further processing. Final Act. 3;
Cote Fig. 1, 4(a)–(e), ¶¶ 4, 5, 14, 28. The Examiner found Cote discloses
varying the pitch of the printed product by using a controller with an
electronic cam velocity profile to vary the velocity of the printed products as
they are transferred between the print unit and the downstream equipment.

2
Appellants relied on the same line of argument in addressing independent
claims 1 and 12. See Appeal Brief, generally. Accordingly, we limit our
discussion to independent claim 1. Appellants did not present separate
arguments for dependent claims 3, 4, 8–10, 13, 15–17 and 21–23. Id.
Accordingly, these claims stand or fall with their respective independent
claims. Claims argued separately will be addressed separately.
Appeal 2013-002869
Application 12/072,947

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Final Act. 3; Cote Fig. 1, 4(a)–(e), ¶¶ 4, 5, 14. The Examiner found Cote
does not teach that a pitch changing device including a roller/nip
arrangement as claimed or a sensor connected to the controller and located
downstream of the nip to detect a final pitch between the printed products.
Final Act. 3. The Examiner found Buhayar teaches a processing apparatus
for a stream of products having a pitch changing device including an upper
roller, mounted on an upper axle; a lower roller, mounted on a lower axle,
the upper and lower rollers forming a roller nip; and a motor driving the
upper and lower rollers in opposite directions, the nip receiving the stream of
products and the motor varying the velocity of the nip so as to alter the first
pitch. Final Act. 3; Buhayar Figs 1, 2, col. 4, ll. 19–61, col. 7, ll. 7–48. The
Examiner found it would have been obvious to one having ordinary skill in
the art to modify the apparatus of Cote by substituting Buhayar’s pitch
changing device comprising a roller/nip arrangement for Cote’s pitch
changing device to reduce the space taken up by the device. Final Act. 4;
Ans. 2, 4. With respect to the pitch sensor, the Examiner found Alper
teaches a pitch changing device comprising pairs of rollers and a sensor
connected to a controller to detect the final pitch between the printed
products. Final Act. 4; Alper Fig. 1, col. 3, l. 24–col. 4, l. 41. The Examiner
found it would have been obvious to one having ordinary skill in the art to
modify Cote’s structure to include Alper’s sensor to ensure that the pitch is
properly controlled to the desired value. Final Act. 4.
Appellants argue Cote is not concerned with the pitch of the products
because Cote’s purpose is to reduce the velocity of signatures received from
the printing press so the signatures can be processed in downstream
processing equipment which requires the signatures to be at lower velocities.
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Application 12/072,947

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App. Br. 7, 10. Thus, Appellants argue one skilled in the art would not
modify Cote’s variable speed motor and movable belt arrangement with
Buhayar’s rollers and axles arrangement to change the pitch between Cote’s
signatures absent impermissible hindsight. App. Br. 8–9.
We are unpersuaded by these arguments and agree with the
Examiner’s finding of obviousness. Final Act. 4; Ans. 2, 4. While
Appellants argue Cote is not concerned with the pitch between products,
Figures 4(a)–(e) clearly illustrate Cote’s device changes the pitch between
the product entering the device (Figure 4(a)) and the products exiting the
device (Figure 4(e)). Cote ¶¶ 23–28. That is, contrary to Appellants’
argument (App. Br. 7, 10), Cote is concerned with the pitch between
products. Thus, the Examiner reasoned that it would have been obvious for
one skilled in the art to use known devices for changing the pitch between
webs, such as the roller/nip arrangement disclosed by Buhayar, as an
alternative to the belt arrangement of Cote. Final Act. 4; Ans. 2, 4; Cote
Figure 1; Buhayar Figure 2. That is, the Examiner determined that one of
ordinary skill in the art would have employed the known roller/nip
arrangement of Buhayar for varying the pitch between web products in lieu
of the known belt arrangement of Cote for varying the pitch between web
products with a reasonable expectation of successfully varying the pitch
between Cote’s products. Final Act. 4; Ans. 2, 4. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007); see also In re Fout, 675 F.2d 297,
301 (CCPA 1982) (“Express suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.”); In re
Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants
merely substituted one element known in the art for a known equivalent, this
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Application 12/072,947

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court affirms [the rejection for obviousness].”). On this record, Appellants
have not adequately explained why one skilled in the art would not have
substituted Buhayar’s pitch changing device for Cote’s.
Appellants argue that Alper does not disclose the claimed controller.
App. Br. 9. Appellants further argue, absent impermissible hindsight, the
skilled artisan would not modify the belts of Cote to incorporate Alper’s
pitch detection sensor because Cote is not concerned with pitch. Id. at 9–10.
We are unpersuaded by these arguments as well. As we noted above,
Cote is concerned with pitch between web products. Further, as noted by the
Examiner, sensors are known to be useful to check processes for proper
operation. Ans. 4. The Examiner found Alper discloses a pitch changing
device comprising pairs of rollers and a sensor connected to a controller to
detect the final pitch between the printed products to allow for adjustments
as desired. Final Act. 4; Alper Figure 1, col. 3, l. 24–col. 4, l. 41.
Appellants have not adequately explained why one skilled in the art would
not have been capable of adapting a pitch sensor in the modified device of
the combined teachings of Cote and Buhayar to detect a final pitch between
web products given that both Cote and Buhayar are both concerned with the
pitch between web products. Cote Figures 4(a)–(e); Buhayar Figure 1, 3(a)–
(d). See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed
on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385,
1390 (CCPA 1969).
With respect to claim 2, Appellants argue that Buhayar does not
disclose the limitations of claim 2 because it uses a chain instead of a belt to
drive a lower pair of rollers. App. Br. 14.
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Application 12/072,947

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We are unpersuaded by this argument and agree with the Examiner’s
finding that Buhayar’s drive chain is the functional equivalent of a drive belt
given that Buhayar discloses using the chain to drive the pitch device rollers
as claimed. Ans. 5; Buhayar Figure 2. Appellants have not adequately
argued otherwise.
Regarding claim 14, Appellants argue Cote discloses a slowdown
device and that the entire purpose of Cote is destroyed if the first velocity is
less than the second velocity as required by the subject matter of claim 14.
App. Br. 14. With respect to claim 20, Appellants argue the Examiner has
not explained how the sensor would be used to adjust Cote’s deceleration.
Id. at 15.
We are also unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. Ans. 5. Buhayar discloses that
the velocities of the entering and exiting web products can be varied to
obtain a desired a pitch between web products through the use of
acceleration and deceleration profiles. Buhayar col. 4, l. 62–col. 5, l. 9,
col. 12, ll. 53–64. Therefore, one skilled in the art would have the capability
to determine the speed profile necessary to achieve a desired pitch between
web products, including adapting a pitch sensor to determine when to adjust
the speed profiles when needed. In re Sovish, 769 F.2d at 743.
Accordingly, we sustain the Examiner’s prior art rejection of claims
1–4, 8–10, 12–17 and 20–23 under 35 U.S.C. § 103(a) (Rejection I) for the
reasons given above and presented by the Examiner.
The Examiner separately rejected claims 6, 7, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Cote, Buhayar, Alper, and Wingate (Rejection
II) (Final Act. 6–7) and claims 11 and 18 rejected under 35 U.S.C. § 103(a)
Appeal 2013-002869
Application 12/072,947

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as unpatentable over Cote, Buhayar, Alper, and Pollock (Rejection III)
(Final Act. 7–8). In addressing these separate rejections, Appellants rely
primarily on the arguments presented when discussing Rejection I. App. Br.
15–16. Appellants did not substantively address or further distinguish the
cited secondary references based on the additional limitations of the
dependent claims. Id.
Accordingly, we affirm these rejections for the reasons presented by
the Examiner and given above.
ORDER
The Examiner’s prior art rejections of claims 1–4 and 6–23 under
35 U.S.C. § 103(a) (Rejections I–III) are affirmed.

TIME PERIOD
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).

AFFIRMED
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