Ex Parte Whitten et al

Board of Patent Appeals and Interferences

Nov 5, 2010

11368980 (B.P.A.I. Nov. 5, 2010)

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.
11/368,980 03/06/2006 Dave Elliott Whitten 6003.1036 5845
23280 7590 11/05/2010
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/05/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVE ELLIOTT WHITTEN and JOHN LEE KETCHUM
____________

Appeal 2009-008173
Application 11/368,980
Technology Center 3700
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Dave Elliott Whitten and John Lee Ketchum (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-7

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008173
Application 11/368,980

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under 35 U.S.C. § 102(b) as anticipated by Ertavi (US 5,443,256, issued
Aug. 22, 1995). We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
The Invention
The claims on appeal relate to a folder.
Claim 1, sole independent, reproduced below, is illustrative of the
subject matter on appeal.
Claim 1: A folder comprising:
a cylinder having a first gripping device
receiving a folded edge of a signature and rotating
the signature at a first surface speed; and
a conveyor pressing the signature against an
outer surface of the cylinder while the conveyor
contacts the signature at a second surface speed
lower than the first surface speed.

The Rejection
The Examiner posits that the broadest reasonable interpretation of “a
conveyor” as recited in the claim permits the Examiner to find that the
combined guide belt 4 and traction device 6 anticipate it. Next, the
Examiner infers that since claw 5 contacts the cylinder, it inherently presses
the signature against the outer surface of the cylinder and appears to further
infer that since traction device 6 travels at a velocity 30% to 35% slower
than the jaw cylinder 1, then guide belt 4 inherently travels at a velocity 30%
to 35% slower than jaw cylinder 1. Based on these findings and inferences,
the Examiner maintains that guide belt 4 and traction device 6 taken together
anticipate the claimed limitation of a conveyor contacting the signature at a
second surface speed lower than the first surface speed which is the rotation
speed of the cylinder.
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Application 11/368,980

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Contentions
Appellants contend that 1) Ertavi fails to disclose a conveyor pressing
a signature against an outer surface of a cylinder while the conveyor contacts
the signature at a second speed lower than the cylinder (first) surface speed
and 2) it does not necessarily flow from the disclosure of Ertavi that claw 5
presses any signature against the cylinder and actually removes the signature
from the cylinder 1.

OPINION
Appellants’ Specification discloses that first conveyor 20 includes a
belt 22 that presses signature 50 against jaw cylinder 30. Belt 22 moves at a
velocity V2, while jaw cylinder moves at a velocity V1. V2 is a slower
velocity than V1. As a result of this difference between V2 and V1, the
folded edge 51 of signature 50 slides out of gripping device 40. Spec. 2, ¶¶
[0017] and [0018].
Ertavi discloses an apparatus for scale-like streaming of folded
signatures 2 (printed copies, Ertavi’s nomenclature). The apparatus includes
a jaw cylinder 1, a guide belt 4, and a traction device 6 with claws 5. See
Fig. 1. A signature 2 is pressed against the surface of jaw cylinder 1 by the
guide belt 4. Col. 6, ll. 12-16. Claws 5 on traction device 6 engage with
appropriate removed portions on the surface of the jaw cylinder 1. Id. at
ll. 18-21. The speed of traction device 6 is approximately 30% to 35%
lower than the circumferential speed of the jaw cylinder 1. Id. at ll. 23-25.
Ertavi is expressly silent concerning the speed of the guide belt 4.
While the Examiner correctly looks to apply a broadest reasonable
interpretation of the claim terms under examination there are limits. The
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Application 11/368,980

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limiting factor is consistency with the specification. In other words, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Further, it is also necessary for the Examiner
to properly construe what an applied reference fairly teaches or discloses.
See, e.g., In re Fracalossi and Wajer, 681 F.2d 792 (CCPA 1982).
A determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, which is a question of law, followed by,
in the case of anticipation or obviousness, a comparison of the construed
claim to the prior art. Key Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d
709, 714 (Fed. Cir. 1998) (citations omitted). A proper finding of
anticipation requires a showing that each element or limitation in a claim is
present in the cited reference, either explicitly or inherently, and that the
elements must be arranged in the same manner as in the claim under review.
In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). See also Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991)
(anticipation requires “no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention.”) (emphasis added).
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
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Application 11/368,980

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(reversed rejection because inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art);
In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). “To establish inherency,
the extrinsic evidence ‘must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference….’ ‘Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
omitted). “In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990).
The Examiner’s tacit claim construction that “a conveyor” as recited
in claim 1 can be interpreted as a plurality of conveyors is not the broadest
reasonable interpretation when it is read in light of Appellants’ Specification
as by a person of ordinary skill in the art. Appellants’ Specification
discloses that conveyor 20 consists of a belt 22. Accordingly, the broadest
reasonable interpretation of “a conveyor” that can be afforded to this term is
a single structure that conveys; not plural structures that convey.
While Ertavi’s guide belt 4 does press the signature 2 against the jaw
cylinder 1, Ertavi is silent as to the speed at which the belt travels. The
Examiner equating the speed of the traction device 6 to the guide belt 4, in
order to find that the speed of the belt 4 is slower than the jaw cylinder 1,
has no basis within Ertavi’s disclosure. Nor does the Examiner’s technical
reasoning supplied in the Answer provide a sufficient basis to reasonably
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support the determination that the speed of guide belt 4 is 30% to 35%
slower than the speed of the jaw cylinder 1, as Ertavi explicitly discloses is
the case for the traction device 6. More likely is the case that the speed of
guide belt 4 is equivalent to the speed of traction device 6; else the
signatures 2 would bunch on the jaw cylinder and not smoothly transition
into the bottom of the claws 5 as disclosed by Ertavi. Indeed, Ertavi seems
to suggest that guide belt 4 travels at a higher speed than traction device 6.
See col. 6, ll. 31-37. As such, Ertavi fails to explicitly or inherently disclose
that the guide belt 4 travels at a lower speed than the jaw cylinder 1 as
recited in claim 1 in order for Ertavi to anticipate. Moreover, since claws 5
are disclosed as being positioned in removed (relieved) portions of cylinder
1, as Appellants argue, the combination of claw 5 and traction device 6 in
removing the signature 2 from the jaw cylinder 1 tends to demonstrate that
the claw 5 does not press against the signature, but instead contacts the jaw
cylinder 1 itself.

CONCLUSION
In view of the foregoing, we are unable to sustain the Examiner’s
rejection of claims 1-7 as anticipated by Ertavi.

DECISION
The Examiner’s decision to reject claims 1-7 under 35 U.S.C.
§ 102(b) as anticipated by Ertavi is reversed.

REVERSED

Appeal 2009-008173
Application 11/368,980

7
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