Ex Parte VELLA

Patent Trial and Appeal Board

Jun 11, 2018

14078602 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/078,602 11/13/2013 ANTHONY JOSEPH VELLA
3705 7590 06/13/2018
ECKERT SEAMANS CHERIN & MELLOTT LLC
U.S. Steel Tower
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
UNITED ST A TES OF AMERICA
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.
291448-01029 1093
EXAMINER
HINZE,LEOT
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY JOSEPH VELLA
Appeal2017-009015
Application 14/078,602
Technology Center 2800
Before MARK NAGUMO, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-9 and 11-19, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
1 In explaining our Decision, we refer to the Specification filed November
13, 2013 ("Spec."); Non-Final Office Action docketed November 20, 2015
("Non-Final Act."); Appeal Brief filed May 6, 2016, as corrected August 29,
2016 ("Appeal Br."); Examiner's Answer docketed March 24, 2017
("Ans."); and Reply Brief filed May 24, 2017 ("Reply Brief'). We note that
Appellant filed a "Supplemental Appeal Brief' on May 24, 2017 ("Suppl.
Appeal Br."), which Appellant states "adds the page and line number
associated with each reference number in the Summary of Claimed Subject
Matter" section of the Appeal Brief. Suppl. Appeal Br. 1.
2 Appellant is the Applicant, Stolle Machinery Company, LLC, which is also
identified as the real party in interest. Appeal Br. 1.
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Application 14/078,602
We AFFIRM.
The Claimed Invention
Appellant's disclosure relates to can decorator machines for
decorating cans used in the food and beverage packaging industries and, in
particular, to a fountain blade assembly for an ink station assembly for can
decorator machines. Spec. 1, 21 (Abstract), Figs. 4, 6, 8, 9. Claim 1 is
illustrative of the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (Appeal Br. 19-20) (key
disputed claim language italicized and bolded):
1. A fountain blade assembly for an ink station assembly,
said ink station assembly including an anilox roll and an ink
fountain, said ink fountain including a liquid ink supply, said
ink fountain structured to apply said ink to said anilox roll, said
fountain blade assembly comprising:
a mounting assembly;
said mounting assembly includes a mounting with an
upper surface and a lower surface;
wherein said mounting lower surface and said mounting
upper surfaces are at an angle relative to each other;
said mounting defines a number of elongated passages,
each said mounting passage extending generally parallel to the
mounting lower surface;
a blade assembly including a blade with a first edge, said
blade coupled to said mounting upper surface;
said blade first edge adjacent to the surface of said anilox
roll;
said blade first edge including a plurality of adjustable
portions, each blade first edge adjustable portion structured to
move between a first position, wherein each said blade first
edge adjustable portion is spaced from said anilox roll outer
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surface, and a second position, wherein each said blade first
edge adjustable portion engages said anilox roll outer surf ace;
an adjustment assembly including a number of
adjustment devices, each adjustment device structured to move
a blade first edge adjustable portion between said first and
second positions;
each said adjustment device includes an elongated body,
each said adjustment device body including a first end, a medial
portion and a second end;
wherein each adjustment device body first end is
generally conical and tapered at an angle substantially similar to
the angle between the mounting lower surface and mounting
upper surface;
each said adjustment device body first end structured to
engage said blade; and
wherein at least one blade first edge adjustable portion is
in a different position relative to another blade first edge
adjustable portion.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Goodwin US 5,031,533
Pickard US 5,694,850
Heuschkel et al., US 8,146,493 B2
(hereinafter "Heuschkel")
The Rejections
July 16, 1991
Dec. 9, 1997
Apr. 3, 2012
On appeal, the Examiner maintains the following rejections:
1. Claims 8, 9, 18, and 19 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
applicant regards as the invention ("Rejection 1 "). Non-Final Act. 3.
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2. Claims 1, 6-9, 11, and 16-19 are rejected under
35 U.S.C. § 103 as being unpatentable over Goodwin in view of Heuschkel
("Rejection 2"). Non-Final Act. 4.
3. Claims 2-5 and 12-15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Goodwin in view of Heuschkel as applied to
claims 1 and 11 above, and further in view of Pickard ("Rejection 3"). Non-
Final Act. 11.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer
and Non-Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below for emphasis.
Reiection 1
Appellant argues claims 8, 9, 18, and 19 as a group. Appeal Br. 8.
We select claims 8 and 18 as representative and the remaining claims subject
to this rejection stand or fall with claims 8 and 18. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 8 depends from claim 1 and further recites "wherein said blade
first edge adjustable portion second position is between about 0.010 inch
and 0.020 inch from said anilox roll outer surface." Appeal Br. 21 (Claims
App 'x) ( emphasis added). Dependent claim 18 also recites the limitation
"about 0.010 inch and 0.020 inch." Id. at 24.
The Examiner rejects claims 8 and 18 for indefiniteness because the
Examiner contends that the claims recite an indefinite range of values. Non-
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Final Act. 3. In particular, the Examiner contends that the modifier "about"
makes the claimed range of "0.010 inch and 0.020 inch" indefinite. Id. at 3;
see also Ans. 2-3. The Examiner maintains that the recitation would require
"one to engage in guesswork to determine whether a value outside of the
claimed range is 'about' the claimed range." Ans. 3.
Appellant argues that the claims are not indefinite and the Examiner's
rejection should be reversed because "one skilled in the art would
understand what is claimed when the claims are read in light of the
specification." Appeal Br. 8; see also Reply Br. 2-3. In particular,
Appellant argues that the term "about" is merely a broadening modifier that
is used as a standard tool in claim drafting. Appeal Br. 1 O; see also Reply
Br. 2 (arguing "use of the term 'about' is commonly accepted in patent
claims"). Appellant contends that one of ordinary skill in the art would
understand what is meant by the term "about" when that term precedes the
numerical measurements and that use of the term does not make the claims
indefinite. Appeal Br. 10.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. The Federal Circuit has explained that during
prosecution
[i]t makes good sense, for definiteness and clarity as for other
validity requirements, for the USPTO to initially reject claims
based on a well-founded prima facie case of lack of clarity ...
based on the perspective of one ordinary skill in the art in view
of the entire written description and developing prosecution
history.
In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). The court further
stated that "if the applicant does not adequately respond to that prima facie
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case," it also makes good sense "to confirm that rejection on the substantive
basis of having failed to meet the requirements of§ 112(b )." Id.
That is the case here. Although we agree with Appellant that use of
the term "about" does not automatically make the claims indefinite,
Appellant has not identified any aspect of the Specification or any other
evidence of record to rebut the Examiner's determination that the claims
recite an indefinite range of values or that, when read in light of the
Specification, one skilled in the art would understand the meaning of the
term "about" and the scope of the numerical range being claimed. See
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir.
2014) (explaining that although terms of degree do not require "absolute or
mathematical precision," "[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art"); see also Biosig Instruments, Inc. v. Nautilus,
Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (explaining that when a "word of
degree" is used in a claim, it must be determined whether the patent provides
"some standard for measuring that degree").
We do not find Appellant's contentions, including the citations to the
case law and MPEP, at pages 8-10 of the Appeal Brief and 2--4 of the Reply
Brief persuasive for the well-stated reasons stated by the Examiner at
pages 2-3 of the Answer. In particular, we agree with the Examiner (Ans. 2)
that although the cited case law and MPEP tend to support the general
proposition that using the term "about" in a claim does not automatically
render the claim indefinite, Appellant does not direct us to any explanation
of the term "about" in the Specification or provide an adequate basis for
determining the scope of "about" or some standard in the Specification for
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measuring the term's degree. See Amgen, Inc. v. Chugai Pharm. Co., 927
F.2d 1200, 1218 (Fed. Cir. 1991) (affirming a determination that "at least
about" rendered claims indefinite when the claim language, written
description, prosecution history, and prior art did not indicate what range of
specific activity is covered by the term "about").
We find equally unpersuasive Appellant's contentions regarding the
term "about" being used as a "standard tool in claim drafting" (Appeal Br.
10) and "commonly accepted in patent claims" (Reply Br. 3) because they
are general statements that do not meaningfully respond to the Examiner's
indefiniteness rejection and conclusion in this case. Packard, 751 F.3d at
1312.
Accordingly, we affirm the Examiner's rejection of claims 8, 9, 18,
and 19 for indefiniteness.
Reiection 2
Appellant argues claims 1, 6-9, 11, and 16-19 as a group. Appeal
Br. 10. We select claim 1 as representative and the remaining claims subject
to this rejection stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Goodwin and
Heuschkel suggests a fountain blade assembly for an ink station assembly
satisfying all of the limitations of claim 1 and thus, concludes the
combination would have rendered the claim obvious. Non-Final Act. 4---6.
The Examiner finds that Goodwin teaches the majority of the
limitations of claim 1, but that the reference does not teach an "anilox roll."
Id. at 4---6 ( citing Goodwin, Fig. 1 ( element 14), Fig. 2 ( elements 14, 16, 18,
24, 26), col. 3, 1. 68---col. 4, 1. 2). The Examiner, however, relies on
Heuschkel for teaching this missing limitation. Id. at 6. In particular, the
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Examiner finds that Heuschkel teaches an ink fountain having a metering
device and an anilox roll, with the roll having cells on its circumferential
surface. Id. at 6 ( citing Heuschkel, Fig. 1 ( elements 1, 2, 4, 6), col. 3, 11. 4---6,
14--16). The Examiner further finds that Heuschkel teaches that the cells are
advantageous for reducing wear when processing abrasive inks and for
increasing service life. Id. at 6 (citing Heuschkel, col. 1, 11. 52-53, 63---64).
Based on the above findings, the Examiner concludes that
[i]t would have been obvious to a person having ordinary skill
in the art at the time the application was filed to modify
Goodwin to use the anilox roll of Heuschkel in place of the
fountain roll 16, because Heuschkel teaches that an ink fountain
roll with a pattern of cells is advantageous for reducing wear
when processing extremely abrasive printing inks and for
increasing service life.
Non-Final Act. 6.
Appellant argues that the Examiner's rejection should be reversed
because neither Goodwin nor Heuschkel discloses an "anilox roll," as recited
in claim 1. Appeal Br. 10, 12-13; see also Reply Br. 4---6. Appellant
contends that "neither reference ever uses the term." Appeal Br. 13; see also
id. at 12 (arguing that "Heuschkel never identifies the roller as an 'anilox
roller"' and "the term 'anilox' is not used"); Reply Br. 6 (same).
We do not find Appellant's argument persuasive of reversible error in
the Examiner's rejection for the well-stated reasons provided by the
Examiner at pages 4--5 of the Answer. In particular, on the record before us,
we concur with the Examiner's determination (Ans. 4--5) that Heuschkel
does disclose an ink fountain roll 4, which corresponds to and falls within
the scope of the "anilox roll" element of claim 1. Heuschkel, Abstract,
Figs. 1, 2, col. 3, 11. 8-16.
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As the Examiner finds (Ans. 5), Heuschkel's roll 4 contains the same
structural features as the claimed "anilox roll," including having a number of
cells disposed on the outer circumferential surface of the roll. Regarding the
structural features of the claimed "anilox roll," Appellant's Specification
teaches that the "anilox roller utilizes a number of cells disposed on the
anilox roll outer surface" and the "cells meter, i.e., control, the amount of
ink transferred to subsequent rolls." Spec. 2, 11. 26-28. As the Examiner
explains (Ans. 4), like the claimed anilox roll, Heuschkel teaches that the
roll 4 contains a number of cells 9 on its outer surface 7, the circumferential
surface of the roll 4 forms a bearing face which includes webs that merge
into one another in the manner of a mesh, and that the cells 9 are made in the
circumferential surface. Heuschkel, Fig. 2, col. 3, 11. 8-16.
We do not find persuasive Appellant's arguments that the cited art
"never identifies the roller as an 'anilox roller"' and the "term 'anilox' is not
used" in either of the references (Appeal Br. 12-13) because "[t]he specific
limitation need not be disclosed in haec verba in the reference." In re Bode,
550 F.2d 656, 660 (1977); see also In re Burckel, 592 F.2d 1175, 1179
(CCP A 1979) ("[A] reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests.").
We agree with the Examiner (Ans. 5) that although Heuschkel does
not expressly use the term "anilox roll" to describe roll 4, the reference does
teach that roll 4 is an ink fountain roll having cells on its circumferential
surface and would have suggested to one of ordinary skill in the art that the
roll is, indeed, an anilox roll.
Appellant's inherency argument (Appeal Br. 12-13) is equally
unpersuasive because, contrary to what Appellant's argument suggests, the
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Examiner does not rely on inherency in finding that Heuschkel teaches or
suggests the claimed anilox roll. See Ans. 5 ( explaining that "no inherency
argument is needed to show that Heuschkel teaches an anilox roller").
Rather, as previously discussed above, the Examiner finds (Ans. 5) that
Heuschkel discloses a roll 4, which has the structural features of an anilox
roll and thus, corresponds to the "anilox roll" recitation of claim 1.
Appellant argues that the Examiner's rejection should be reversed
because "Goodwin does not disclose a fountain assembly wherein the blade
contacts a roller." Appeal Br. 10. In particular, Appellant argues that
because Goodwin discloses that there is a gap between the blade and the
roller (Appeal Br. 11-12), the reference does not disclose a "a second
position, wherein each said blade first edge adjustable portion engages said
anilox roll outer surface," as recited in claim 1. See also Reply. Br. 4---6.
We do not find Appellant's arguments in this regard persuasive of
reversible error in the Examiner's rejection. On the record before us, we
find that a preponderance of the evidence and sound technical reasoning
support the Examiner's analysis and determination that the combination of
Goodwin and Heuschkel suggests a fountain blade assembly satisfying all of
the limitations of claim 1, including "a second position, wherein each said
blade first edge adjustable portion engages said anilox roll outer surface."
Goodwin, Fig. 1 (element 14), Fig. 2 (elements 14, 16, 18, 24, 26), col. 3, 1.
68---col. 4, 1. 2, col. 5, 11. 40-42; Heuschkel, Fig. 1 ( elements 1, 2, 4, 6), Fig.
2, col. 1, 11. 52-53, 63---64, col. 3, 11. 4---6, 14--16.
We do not find Appellant's argument that Goodwin discloses a gap
between the blade and the roller and does not disclose the limitation "a
second position, wherein each said blade first edge adjustable portion
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engages said anilox roll outer surface" (Appeal Br. 10-12; Reply Br. 4--6)
for the reasons provided by the Examiner at pages 3--4 of the Answer and
pages 4--6 of the Non-Final Action. In particular, as the Examiner finds
(Ans. 4), although Goodwin discloses a configuration in which there is a gap
between the blade and the roller, Goodwin also teaches that in certain
instances it may be desirable to prevent the flow of ink and suggests that, in
those instances, the blade is positioned such that it is touching the roller,
thereby cutting off the supply of ink. See Goodwin, col. 5, 11. 40--42
( disclosing "with the 'O' position completely cutting of ink flow in that area
of the fountain blade").
Thus, as the Examiner finds (Ans. 4), Goodwin teaches or suggests
that the blade "engages said anilox roll outer surface," as recited claim 1 and
in light of Appellant's Specification. See Spec. 5 ( disclosing that "the
statement that two or more parts or components 'engage' one another shall
mean that the elements exert a force or bias against one another either
directly or through one or more intermediate elements or components").
We do not find Appellant's assertions that "Goodwin never states that
the blade contacts the roll" and "Goodwin provides no actual disclosure as to
the spacing between the blade and the roll" and comments at page 5 of the
Reply Brief persuasive because they are conclusory. Attorney argument is
not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant's argument regarding the definitions of a "Fountain Blade"
and a "Doctor Blade" at pages 11-12 of the Appeal Brief are not well-taken
because they do not persuasively address the Examiner's findings and
Goodwin's disclosure regarding the configuration where the blade is
touching the roller.
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Lastly, Appellant argues the Examiner has not articulated a reason
why one of skill in the art would have incorporated Heuschkel' s "specialty
roller" with Goodwin's "conventional" ink fountain assembly to arrive at the
claimed invention (Appeal Br. 17).
Contrary to what Appellant argues, we find that the Examiner does
provide a reasonable basis and identifies a preponderance of the evidence in
the record to evince why one of ordinary skill would have combined the
teachings of the cited references to arrive at Appellant's claimed invention.
Non-Final Act. 6 (explaining that one of ordinary skill in the art would have
had reason to use the anilox roll of Heuschkel in place of Goodwin's roll
because Heuschkel teaches that an ink fountain roll with a pattern of cells is
advantageous for reducing wear when processing extremely abrasive
printing inks and for increasing service life); Heuschkel, col. 1, 11. 52-53,
63---64; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007)
( explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant's assertions that "the Heuschkel roller is a more complex
and costly element to create" and the "Examiner has not articulated a reason
why one of skill in the art would incorporate such a complex element in the
'conventional' ink fountain assembly of Goodwin" (Appeal Br. 17) are not
persuasive because they are conclusory and Appellant does not provide an
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adequate technical explanation or direct us to sufficient evidence in the
record to support them. De Blauwe, 736 F.2d at 705. See also In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) ("That a given combination
would not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination because of some
technological incompatibility.").
Accordingly, we affirm the Examiner's rejection of 1, 6-9, 11, and
16-19 under 35 U.S.C. § 103 as obvious over the combination of Goodwin
and Heuschkel.
Re;ection 3
Appellant does not present any additional substantive arguments in
response to the Examiner's Rejection 3, stated above. Rather, Appellant
relies on the same arguments previously presented above in response to the
Examiner's Rejection 2 regarding claim 1 and the combination of Goodwin
and Heuschkel. See Appeal Br. 17-18.
Appellant's assertions that "both Goodwin and Pickard disclose ink
assemblies wherein there is a gap between the roller and the associated
blade" and "pick-up/fountain rollers do not include cavities" (Appeal Br. 18)
are not persuasive because they are conclusory and, without more, are
insufficient to rebut or otherwise establish reversible error in the Examiner's
findings and conclusions. De Blauwe, 736 F.2d at 705.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner's Rejection 2, we affirm the Examiner's Rejection 3.
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DECISION
The Examiner's§ 112 rejection of claims 8, 9, 18, and 19
(Rejection 1, stated above) is affirmed.
The Examiner's§ 103 rejections of claims 1-9 and 11-19
(Rejections 2 and 3, stated above) are 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).
AFFIRMED
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