Ex parte WIRZ

Board of Patent Appeals and Interferences

Jul 27, 1998

08015400 (B.P.A.I. Jul. 27, 1998)

Application for patent filed February 9, 1993. According to appellant, the1
application is a continuation-in-part of Application 07/785,034, filed October 30, 1991.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ARNO WIRZ
_____________
Appeal No. 96-2850
Application 08/015,4001
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and McQUADE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
rejection of claims 2, 4, 5 and 7. No other claims are pending
in the application.
Appeal No. 96-2850
Application 08/015,400
The body of each of the independent claims 2 and 4 is inconsistent with the2
preamble in that the body calls for the combination of the foil and the impression
cylinder, whereas the preamble is directed to the impression cylinder per se. Correction
of this inconsistency is in order in the event of further prosecution before the
examiner. For the purpose of reviewing the examiner’s rejections we have interpreted the
claimed subject matter to be directed to the combination of the foil and the impression
cylinder.
2
The invention disclosed in appellant’s application
relates to an offset printing machine in which a foil 4 is
disposed on an impression cylinder 7 to compensate for an
eccentric outer cylindrical surface of the cylinder.2
Claims 2 and 4 are the only independent claims on
appeal. Both of these claims recite that the foil has ?means
for adjusting to and compensating for irregularities in the
shape of respective parts of the outer cylindrical surface of
the impression cylinder.? Claim 2 additionally recites that
the foil is ?chosen from a plurality of foils of varying
thickness.?
A copy of the appealed claims is appended to
appellant’s brief.
Appeal No. 96-2850
Application 08/015,400
Translation attached.3
3
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under 35 U.S.C. § 103:
Wirz et al. (Wirz) 4,327,135 Apr. 27, 1982
Kobler et al. (Kobler) 4,681,035 Jul. 21, 1987
Wirz (German Offenlegungsschrift) 24 46 1883
Apr., 1976
The grounds of rejection are as follows:
1. Claims 2 and 7 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as his invention.
2. Claims 2, 4 and 5 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the German Wirz reference in
view of Kobler.
Appeal No. 96-2850
Application 08/015,400
The pages in the examiner’s answer are unnumbered.4
4
3. Claim 7 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the references applied in the
rejection of claim 4 above and further in view of the U.S.
Wirz patent.
4. Claim 7 additionally stands rejected under 35
U.S.C. § 112, first paragraph, for the reasons set forth on
the fifth page of the examiner’s answer.4
The rejection of claim 7 under the first paragraph of §
112 was first introduced in the examiner’s answer and is
stated to be a new ground of rejection. The answer on the last
page thereof also states that a failure to respond to this new
ground of rejection ?will result in dismissal of the appeal of
the claims [sic, claim] so rejected.? Since no response to
this new ground of rejection is found in the record before us,
we herewith dismiss the appeal as to claim 7, thus leaving for
our consideration the standing rejections of claims 2, 4 and
5.
Appeal No. 96-2850
Application 08/015,400
5
With regard to the rejection of claim 2 under the second
paragraph of § 112, the examiner’s difficulty with the claim
language centers on the recitation that the foil on the
impression cylinder is chosen from a plurality of foils of
varying thickness. As discussed on the third and eighth pages
of the answer, the examiner’s position, in substance, is that
the recitation that the foil on the cylinder is chosen from
the claimed plurality of foils obscures the scope or metes and
bounds of the claimed subject matter in that it is unclear
whether the claim is limited to one foil or to a plurality of
foils.
Appellant has not expressly challenged the examiner’s
position as outlined supra. Instead, appellant’s only response
to the examiner’s rejection of claim 2 under the second
paragraph of § 112 is that “we [sic] do not recite a plurality
of foils as much as we [sic] recite the varying thickness of
the different foils.” This argument begs the question as to
whether claim 2 is limited to one foil or to a plurality of
foils. The fact that the claim may refer to a “varying
thickness” does not detract from the fact the claim explicitly
Appeal No. 96-2850
Application 08/015,400
6
states that there are a “plurality of foils” and that the foil
on the impression cylinder is chosen from the claimed
plurality of foils.
Furthermore, the recitation that there are “a plurality
of foils of varying thickness” is ambiguous and hence
indefinite in that it is unclear whether each foil in the
plurality of foils is required to be of “varying thickness” or
whether the thickness of each foil is required to be different
from the thickness of each of the other foils making up the
plurality of foils.
For the foregoing reasons, we will sustain the examiner’s
rejection of claim 2 under the second paragraph of § 112.
Turning now to the § 103 rejection of claims 2, 4 and 5,
the examiner concedes that the German Wirz reference does not
contain a teaching that the foil 1 on the printing cylinder 17
compensates for irregularities in the outer cylindrical
surface of the cylinder. He nevertheless concludes:
Appeal No. 96-2850
Application 08/015,400
7
It would have been obvious to one of
ordinary skill in the printing art to
provide the foil of Wirz with a varying
thickness in view of Kobler et al. to
compensate for non-uniform rotation of the
cylinder thereby achieving clear printed
images. [Answer, fourth page].
We cannot sustain the § 103 rejection of claims 2, 4 and
5. The foil in the German Wirz reference is merely used to
reduce the build-up or accumulation of dye on the printing
cylinder in the embodiment of Figure 5.
The Kobler reference, on the other hand, does not
disclose a “foil” as such. Nor is it concerned with the
problem of eccentricity or other irregularities in the shape
of the outer cylindrical surface of a printing or impression
cylinder.
Instead, the Kobler reference addresses the problem
arising from oscillations or vibrations of blanket cylinders
which act as impression or printing cylinders, causing non-
uniform printing pressure between opposing blanket cylinders.
To overcome this problem, Kobler teaches the art to thicken a
Appeal No. 96-2850
Application 08/015,400
8
blanket underlay 13, which is disposed between an outer rubber
blanket 30 and the periphery of the oscillating blanket
cylinder, in regions where the blanket cylinder exhibits
reduced printing pressure to make the printing pressure more
uniform. Such a teaching would not have suggested the
examiner’s proposed modification of Wirz’ foil 1 for solving a
problem not recognized or addressed by either of the applied
references. If anything, Kobler suggests the concept of
providing one of Wirz’ blanket cylinders 13, 16 with an
underlay having increased thickness in certain regions to
compensate for oscillations of the cylinder. Such a
suggestion, however, would not arrive at the claimed
invention.
In the final analysis, the only way the examiner could
have arrived at his conclusion of obviousness is through
hindsight based on appellant’s teachings. Hindsight analysis,
however, is clearly improper. In re Deminski, 796 F.2d 436,
443, 230 USPQ 313, 316 (Fed. Cir. 1986).
In summary, the appeal as to claim 7 is dismissed, the
Appeal No. 96-2850
Application 08/015,400
9
rejection of claim 2 under the second paragraph of § 112 is
affirmed, and the rejection of claims 2, 4 and 5 under § 103
is reversed.
The examiner’s decision rejecting appealed claims 2, 4
and 5 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 96-2850
Application 08/015,400
10
JOHN P. McQUADE )
Administrative Patent Judge )
Herbert L. Lerner
1200 South Federal Highway
Hollywood, FL 33020