KBA-NOTASYS SADownload PDFPatent Trials and Appeals BoardAug 20, 20212020005420 (P.T.A.B. Aug. 20, 2021) Copy Citation 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. 15/062,113 03/06/2016 Johannes Georg SCHAEDE DMB-5571-37 7153 23117 7590 08/20/2021 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER EVANISKO, LESLIE J ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 08/20/2021 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHANNES GEORG SCHAEDE and MATTHIAS GYGI ____________ Appeal 2020-005420 Application 15/062,113 Technology Center 2800 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection under 35 U.S.C. § 103 of claims 22–35. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies KBA-Notasys SA as the real party in interest (Appeal Br. 3). Appeal 2020-005420 Application 15/062,113 2 CLAIMED SUBJECT MATTER Claim 22 is reproduced below is representative (emphasis added to highlight a key disputed limitation): 22. A sheet-fed or web-fed printing press for numbering and varnishing of security documents, including banknotes, comprising: a numbering group comprising at least one numbering unit for numbering printed material in the form of individual sheets or successive portions of a continuous web carrying multiple security imprints; and a varnishing group located downstream of the numbering group for applying varnish onto recto and verso sides of the printed material, the varnishing group comprising at least a first varnishing unit disposed above a path of the printed material to apply varnish on the recto side of the printed material and at least a second varnishing unit disposed below the path of the printed material to apply varnish on the verso side of the printed material, wherein said printing press further comprises at least a first transfer cylinder or drum located downstream of the varnishing group, which first transfer cylinder or drum is designed as a chill roller to cool down the printed material. (Appeal Br. 13, Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Appeal 2020-005420 Application 15/062,113 3 Name Reference Date Kamoda et al. US 6,338,299 Bl Jan.15, 2002 Reinhard et al. US 2006/0208412 Al Sept. 21, 2006 Henn et al. US 2008/0017056 Al Jan. 24, 2008 Stiel US 2009/0188405 Al July 30, 2009 Saito US 2010/0132573 Al June 3, 2010 Schaede EP 1 980 393 A1 Apr. 13, 2007 Hirata (as translated) JP 2006-181963 A July 13, 2006 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis 22–27, 29, 31, 34 103 Kamoda, Schaede, Hirata 28 103 Kamoda, Schaede, Hirata, Henn 30, 33 103 Kamoda, Schaede, Hirata, Saito 32 103 Kamoda, Schaede, Hirata, Reinhard 35 103 Kamoda, Schaede, Hirata, Stiel OPINION Appellant’s arguments are mainly focused on sole independent claim 22 (generally Appeal Br.), except for the separate argument on dependent claim 34 (Appeal Br. 10−11). Accordingly, except for claim 34, we decide each ground of rejection under 35 U.S.C. § 103 on the basis of the Appeal 2020-005420 Application 15/062,113 4 arguments made in support of patentability of claim 22. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Upon consideration of the evidence in this Appeal and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not demonstrated reversible error in the Examiner’s § 103 rejections (Ans. 3–8). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellants to identify the alleged error in the Examiner’s rejection). We sustain the Examiner’s § 103 rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. In assessing whether a claim to a combination of prior art elements or steps would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellant disputes the Examiner’s determination that it would have been obvious to incorporate a transfer chill roller into Kamado/Schaede, as exemplified in Harita (Appeal Br. 6–8). Appellant argues that the Examiner’s reason for modifying Kamoda to add a transfer chill roller is conclusory and has no rational basis (Appeal Br. 8–10). Appellant further argues that the Examiner’s reliance upon Schaede to exemplify a numbering Appeal 2020-005420 Application 15/062,113 5 group does not cure the deficiency of Kamoda which lacks a numbering group (Appeal Br. 10). These arguments are reiterated in the Reply Brief. However, these arguments are not persuasive of reversible error in the Examiner’s rejection because they fail to adequately consider the prior art as a whole, and the inferences that one of ordinary skill would have drawn therefrom, and thus do not adequately address the Examiner’s obviousness position (see generally Ans.). First, Appellant has not shown reversible error in the Examiner’s determination that it would have been obvious, using no more than ordinary creativity, to add a chill transfer roller as exemplified in Hirata to the Kamado/Schaede printing press. As the Examiner pointed out, a skilled artisan would have been well aware of the heat buildup from printing presses and motivated to include a transfer chill roller in order to dissipate heat and/or prevent heat accumulation in the printed sheets (see, e.g., Ans. 3−5; Hirata (translation) ¶¶ 13–15). KSR, 550 U.S. at 418; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (explaining that under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ). Further, Kamoda does not discourage or otherwise teach away from the use of a chill transfer roller therein. Therefore, Appellant’s argument that that one would not have reconstructed Kamoda/Shaede by adding a chill transfer roller to arrive at the claimed invention or that the Examiner has not shown sufficient reason for one of Appeal 2020-005420 Application 15/062,113 6 ordinary skill combine the applied prior art teachings (Appeal Br. 6–10) is not sufficient to show reversible error. As the Examiner also aptly points out, Schaede is only relied upon to exemplify that it was known to use a numbering group/unit in order to provide sequenced numbers on security documents/bank notes (Ans. 6–7; Non-Final Action 4−5). Therefore, no reversible error has been shown in the Examiner’s determination that it would have been obvious to include such a numbering group/unit in the printing press of Kamoda which is designed for producing a banknote. With respect to dependent claim 34, a skilled artisan would have reasonably inferred or appreciated that the spaces denoted by the Examiner in the varnishing unit of the printing press of Kamado were configured to be accessible by an operator for routine maintenance and for repair in case of sheet breaks or other problems. Notably, we do not find—and Appellant has not directed our attention to—any limiting definitions in the Specification, nor does Appellant provide any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation of the language of claim 22 is unreasonable. Therefore, Appellant’s argument that Kamado does not teach the claimed spaces (Appeal Br. 10−11) is not persuasive of reversible error. Therefore, in light of the breadth of the claim language and the teachings of the applied prior art as a whole, we find Appellant’s arguments are not persuasive of reversible error. Accordingly, we sustain all of the § 103 rejections of the claims on appeal. Appeal 2020-005420 Application 15/062,113 7 DECISION The decision of the Examiner is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 22–27, 29, 31, 34 103 Kamoda, Schaede, Hirata 22–27, 29, 31, 34 28 103 Kamoda, Schaede, Hirata, Henn 28 30, 33 103 Kamoda, Schaede, Hirata, Saito 30, 33 32 103 Kamoda, Schaede, Hirata, Reinhard 32 35 103 Kamoda, Schaede, Hirata, Stiel 35 Overall Outcome 22–35 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation