Ex Parte STEFFEN

Patent Trial and Appeal Board

Jul 30, 2018

14589744 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/589,744 01/05/2015
42419 7590 08/01/2018
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
Guido STEFFEN
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.
RP-131-B 9468
EXAMINER
SARPONG, AKWASI
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
mswanson@ppelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUIDO STEFFEN
Appeal2018-001439
Application 14/589,744 1
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Ferag AG. Br. 2.
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Application 14/589,744
INVENTION
Appellant's application relates to "producing a printed product."
Abstract. Claim 1 is illustrative of the appealed subject matter and reads as
follows:
1. A method for producing individualizing a printed product,
compnsmg:
providing a printed product, produced in a digital high-
capacity printing process, in the form of a main product (2) or a
subproduct, with an identification means (IM) thereon which
comprises a piece of individualizable product-specific
information, wherein at least two further downstream
individualization steps are performed, wherein the identification
means allow the piece of information which is to be added in the
at least two further downstream individualization steps to be
associated with the respective product, and wherein in the course
of a conveying line (3) the product to be created is individualized
by means of addressee-specific assembly of a selection of
conventionally or digitally produced subproducts and the
inclusion of at least one further addressee-specific digital printed
product, wherein the identification means comprises an ID tag
including control instructions for indicating whether or not a
handling device needs to insert into the printed product a
corresponding conventionally or digitally produced subproduct
of the selection of conventionally or digitally produced
subproducts, and the ID tag is provided with product-specific
control information readable by sensors on one or more
handling devices to directly control and activate the one or more
handling devices.
REJECTION
Claims 1-17 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over the combination of Deutsch (US 2006/0150848 Al; published
July 13, 2006) and Yasukaga at al. (US 2006/0282466 Al; published Dec.
14, 2006) ("Yasukaga"). Final Act. 4.
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Application 14/589,744
ANALYSIS
We have reviewed the rejections of claims 1-17 in light of
Appellant's arguments the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs.
Contrary to Appellant's statements in the Appeal Brief (Br. 5-15), any other
arguments Appellant could have made, but chose not to make, in the Briefs
are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer (Ans. 2-8) and in the Action
(Final Act. 4--17) from which this appeal was taken. We provide the
following explanation for emphasis.
In rejecting claim 12 for obviousness, the Examiner found Deutsch
teaches all of the limitations of claim 1, except using an ID tag to identify a
different printed product, for which the Examiner relied on Y asukaga. Final
Act. 4---6.
Appellant contends the Examiner erred because Deutsch does not
teach the limitation "an ID tag including control instructions for indicating
whether or not a handling device needs to insert into the printed product a
corresponding conventionally or digitally produced subproduct," as recited
in claim 1. Br. 7. Appellant argues there is no use of the "card" taught in
Deutsch to control handling devices for inserting products downstream of
the "affixing of the card" in step 23 of Deutsch. Id. at 10. Appellant further
argues the Examiner erred in relying on Y asukaga to teach the recited ID
tag. Appellant also argues Y asukaga "is neither relevant nor analogous art
2 Appellants argue claims 1-13 as a group (Br. 12-13), and we choose
claim 1 as representative of the group. See 37 C.F.R. §4I.37(c)(l)(iv).
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Application 14/589,744
to the high speed printing apparatus of Deutsch (or Appellant's invention)."
Id. at 8.
We are not persuaded by Appellant's arguments. The Examiner
found Deutsch teaches that user specific instructions on an addressee-
specific medium are attached to a printed product before the printed product
is completed. Ans. 2-3 ( citing Deutsch ,r 18). The Examiner also found the
addressee-specific medium, containing instructions, determines which
printed sheets are inserted to make the printed product addressee specific.
Id. at 2 (citing Deutsch ,r 19). The Examiner further found Deutsch teaches
a machine readable marking that can be used in processing the printed
product. Id. at 3 (citing Deutsch ,r 24). The Examiner also found Deutsch
teaches a sensor detecting address specific information in the medium so that
address labels may be attached to the printed product. Id. at 4 ( citing
Deutsch ,r 44 ). Thus, the Examiner found the sensor in Deutsch detects
addressee specific information, including control information for indicating
whether or not a handling device needs to insert into the printed product a
corresponding conventionally or digitally produced subproduct. Id.
The Examiner found Deutsch's sensor scanning/reading addressee-
specific information from a medium teaches or at least suggests the recited
"ID tag." Ans. 5 (citing Deutsch ,r,r 24, 44). The Examiner also found
Deutsch's address-specific medium, which is attached to the printed sheets,
makes anonymous printed sheets addressee-specific and teaches "an ID tag
including control instructions." Ans. 5-6 (citing Deutsch ,r 20).
We agree with the Examiner's findings and ultimate conclusion of
obviousness. Appellant did not file a Reply Brief and thus has not
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Application 14/589,744
persuasively rebutted the Examiner's specific findings or legal conclusions
in the Answer.
With regard to the Examiner's reliance on Yasukaga in the Final
Action, we are not persuaded of error. "A reference qualifies as prior art for
an obviousness determination under § 103 only when it is analogous to the
claimed invention." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(citinginnovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
"Two separate tests define the scope of analogous art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved." Id. (quoting In re Bigio, 381 F.3d at 1325).
Appellant argues in a conclusory manner that Y asukaga is not
analogous to "Appellant's invention," but Appellant provides no persuasive
reasoning to support that argument. See Br. 8. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence). Accordingly, we
are not persuaded Y asukaga is not analogous art.
Appellant also argues Y asukaga does not teach or suggest
"Appellant's ID tag on printed products that are being assembled." Br. 8.
That argument is not persuasive. The claim does not recite "an ID tag
on printed products that are being assembled." See App. Br. 16 (Claim
App'x). With regard to the actual limitation "an ID tag including control
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instructions for indicating whether or not a handling device needs to insert
into the printed product a corresponding conventionally or digitally
produced subproduct," the Examiner interpreted "tag" to mean "identifier or
code or label."3 Final Act. 6. Appellant has not persuasively shown the
Examiner's interpretation is overly broad, unreasonable, or inconsistent with
the Specification.
Moreover, nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413,425 (CCPA 1981).
Here, the Examiner did not rely on Y asukaga alone to teach the
disputed ID tag. The Examiner found Deutsch teaches identification means
that comprises an encoded data record number including control instructions
for indicating whether or not a handling device needs to insert into the
printed product a corresponding conventionally or digitally produced sub-
product of the selection of conventionally or digitally produced sub-
products. Final Act. 5 ( citing Deutsch ,r 70). The Examiner further found
Y asukaga teaches "using an ID tag to identify different printed product."
Final Act. 3. Appellant has not persuasively addressed the combined
3 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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teachings of Y asukaga and Deutsch, or what those teachings would have
suggested to an artisan of ordinary skill.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Deutsch and Y asukaga teaches or suggests the disputed
limitations of claim 1.
Appellant also argues the motivation to combine the two cited
references is "nonsensical" because the printing process of Deutsch does not
teach users identifying printed products. Br. 8.
We disagree that the Examiner's reasoning is "nonsensical." The
Examiner provided "articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). The Examiner found modifying Deutsch with the ID
tag taught in Y asukaga would facilitate mass printing by allowing the
identification of individual printing and printed products. Final Act. 6.
Moreover, we are not persuaded that substituting Deutsch's addressee-
specific medium with Yasukaga's ID tag amounts to more than combining
familiar elements according to known methods that yield predictable results.
KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 401 (2007).
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claim 1, as well as the Examiner's 35 U.S.C. § 103(a)
rejections of grouped claims 2-13.
With regard to independent claim 15, Appellant argues in a
conclusory manner that "[ t ]he prior art combination does not reasonably
provide or suggest autonomous handling devices" or "the use of an ID tag on
products as they go along a conveyor to instruct those handing devices on
whether or not to insert subproducts into each of the products." Br. 13.
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We are not persuaded of error because Appellant does not address the
portions of Deutsch and Y asukaga actually relied on by the Examiner. See
Final Act. 12-14. As stated by the Federal Circuit, Rule 41.37 "require[s]
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 15.
Appellant's arguments for claims 14, 16, and 17 are similarly
conclusory. See Br. 13-15. Accordingly, we sustain the Examiner's
35 U.S.C. § 103(a) rejection of claims 14, 16, and 17.
DECISION
We affirm the Examiner's decision rejecting claims 1-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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