PERINI, Fabio

Patent Trials and Appeals Board

Feb 24, 2020

14143428 - (D) (P.T.A.B. Feb. 24, 2020)

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.
14/143,428 12/30/2013 Fabio PERINI 74660 1090
23872 7590 02/24/2020
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
02/24/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABIO PERINI

Appeal 2018-004358
Application 14/143,428
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 9, 15, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on
January 16, 2020, with Brian M. Duncan, Esq., appearing on behalf of
Appellant.
We AFFIRM IN PART.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor,
Fabio Perini. Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method for treating elongated paper
rolls. Claim 1 is illustrative, and is reproduced below:
1. A method for treating elongated paper rolls, the method
comprising the steps:

providing a cut-off machine;

providing elongated paper rolls;

providing a trimming device, said cut-off machine being a
machine that is separate from said trimming device;

trimming said elongated paper rolls with said trimming device to
form trimmed paper rolls;

supplying said trimmed paper rolls to said cut-off machine; and

trimming said trimmed paper rolls with said cut-off machine to
form a plurality of rolls.

THE REJECTIONS
The Examiner rejects:
(i) claims 3, 15, and 19 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
(ii) claims 3, 15, and 19 under 35 U.S.C. § 112, second paragraph, as
being indefinite;
(iii) claims 1 and 3 under 35 U.S.C. § 102(b) as being anticipated by
Boelen (US 4,558,617, issued Dec. 17, 1985);
(iv) claims 1, 3, and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Boelen in view of Newnes (US 2002/0038588 A1, published Apr. 4,
2002) or Hale (US 5,142,955, issued Sept. 1, 1992);
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(v) claim 15 under 35 U.S.C. § 103(a) as being unpatentable over
Boelen in view of Nystrand (US 3,905,260, issued Sept. 16, 1975) and
Newnes or Hale;
(vi) claims 9 and 20 under 35 U.S.C. § 103(a) as being unpatentable
over Betti (US 2003/0037653 A1, published Feb. 27, 2003) in view of
Matsumoto (US 4,111,084, issued Sept. 5, 1978), Huey-Miin (US 4,351,459,
issued Sept. 28, 1982), Friedburg (US 4,043,231, issued Aug. 23, 1977), and
Newnes or Hale;
(vii) claims 15 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over Betti in view of Nystrand, Matsumoto, Huey-Miin, Friedburg, and
Newnes or Hale; and
(viii) claims 9, 15, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand in view of Matsumoto, Huey-Miin, Friedburg,
and Newnes or Hale.

ANALYSIS
Claims 3, 15, and 19--35 U.S.C. § 112, first paragraph--Written Description
Claim 3 contains a limitation requiring that “said cut-off machine is
disconnected from said trimming device.” Appeal Br. 33 (Claims App.).
The Examiner maintains that the limitation lacks written descriptive support
in the Specification, in that there is no teaching that the cut-off machine and
trimming device were ever connected so as to then be disconnected. Final
Act. 3. The Examiner additionally takes the position that it is not clear in
what way the cut-off machine is disconnected from the trimming device. Id.
Appellant argues that certain paragraphs in the Specification evidence
that the trimming device is actuated independently of the cut-off machine,
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and that the accompanying drawings illustrate the two recited elements as
not being connected to one another. Appeal Br. 5–6. Appellant posits that
the term “disconnected” is used in claim 3 to connote that the cut-off
machine is a separate structure from the trimming device. Id. at 6.2
Appellant’s arguments are persuasive. The use of the term
“disconnected” in the context of the disclosure at hand does not require the
two elements involved to have been connected at some point in order to
subsequently be regarded as being disconnected. The rejection is not
sustained as to claim 3.
A similar issue is presented in the rejection of claim 15 as allegedly
lacking written descriptive support for the limitation requiring “said second
cutting device being detached from said first cutting device.” Final Act. 3.
The claim and supporting disclosure do not require, as advocated by the
Examiner, a teaching that the first and second cutting devices are to have
been attached to one another at some point in order to subsequently be
detached from one another. The rejection is not sustained as to claim 15 for
essentially the same reasons presented above.
There are no specific findings as to lack of written descriptive support
for any limitation appearing in claim 19, so we therefore assume that the
rejection of claim 19 is based on its dependence from claim 15. The
rejection is therefore not sustained as to claim 19.

2 We note that claim 1, from which claim 3 depends, already recites that the
cut-off machine is separate from the trimming device. Given Appellant’s
argument that “disconnected” means “separate,” claim 3 possibly does not
further limit claim 1, and, if it does not, should be cancelled.
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Claims 3, 15, and 19--35 U.S.C. § 112, second paragraph--Indefiniteness
The rejections of claims 3 and 15 as being indefinite parallel the
written description rejections.
The Examiner maintains that it is not clear how, in claim 3, the recited
cut-off machine is disconnected from the trimming device. Final Act. 4.
The Examiner repeats that it is unclear from the disclosure how the elements
were ever connected so as to now be recited as disconnected. Id. As above,
the Examiner misconstrues what is required by the term “disconnected.”
The Examiner additionally maintains that it is not clear in what
manner the elements are disconnected, in that, for example, “[t]hey could be
connected together by a conveyor system in between them as shown in
Fig. 3 (elected Species).” Id. Appellant replies that “[t]he ordinary meaning
of the term ‘disconnected’ . . . is ‘not connected; separate.’” Appeal Br. 8.
We agree with Appellant’s interpretation of the term “disconnected.”
Further, the Examiner’s observation that the cut-off device and trimmer may
be connected together by a conveyor system does not render unclear the use
of the term “disconnected” in referring to the two recited elements being
separate from one another. The rejection of claim 3 as being indefinite is not
sustained.
The rejection of claim 15 as being indefinite is not sustained for
essentially the same reasons, in that it is based upon the same alleged
unclarity of the use of the term “detached” in a manner similar to the use of
“disconnected” in claim 3. The rejection of claim 19 appears to be based on
the rejection of claim 15, from which it depends, and the rejection is not
sustained as to claim 19, as well.

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Claims 1 and 3--35 U.S.C. § 102(b)--Boelen
The Examiner finds that Boelen discloses a method including the
steps of providing a cut-off machine, elongated paper rolls, and a trimming
device; trimming the elongated paper rolls with the trimming device,
supplying the trimmed paper rolls to the cut-off machine, and trimming the
rolls with the cut-off machine to form a plurality of rolls. Final Act. 5. As
part of these findings, the Examiner identifies that blades numbered 3–6 in
Boelen are a cut-off machine, and that blades numbered 1 and 8 in Boelen
constitute the claimed trimming device. Id. The Examiner construes
claim 1 as “not specifically recit[ing] how the cut-off machine as a machine
is separate from the trimming machine.” Id. The Examiner further
maintains that “the cut-off machine (as blades 3–6) is disconnected from the
trimming machine as blades 1 and 8, since they are separated.” Ans. 17.
Appellant argues that Boelen discloses a single device having eight
(8) cutting blades, and that blades 3–6 of Boelen are not part of a cut-off
machine that is separate from a trimming device. Appeal Br. 11. Appellant
contends that Boelen does not teach or suggest the provision of a trimming
device and a cut-off machine that are separate structures.
Appellant’s argument is persuasive. Although we do not take issue
with the Examiner’s reliance on blades 1 and 8 as being a trimming device,
in that they operate to trim the ends of an elongated paper roll, and on
blades 3–6 as being part of a cut-off machine that converts the elongated
paper roll into a plurality of shorter rolls, we do not view these components
as being separate devices or machines. The Examiner’s claim construction
appears to interpret “separated” in the context of components recited as a
device and a machine, as including components on a single apparatus that
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are merely “spaced apart” from one another. This is an unreasonably broad
claim construction in light of Appellant’s disclosure, in which two stand-
alone devices that do not necessarily operate in unison are described as
being a trimming device and a cut-off machine, with the elongated paper
rolls being trimmed on the trimming device and then being transported to the
cut-off machine.
Accordingly, the rejection of claims 1 and 3 as being anticipated by
Boelen is not sustained.

Claims 1, 3, and 9--35 U.S.C. § 103(a)--Boelen/Newnes/Hale
Claims 1 and 3
The Examine relies on Boelen as teaching the various aspects of the
methods of independent claims 1 and 9 in essentially the same manner as
discussed above relative to the alleged anticipation of claim 1 by Boelen.
Final Act. 6. The Examiner acknowledges, however, that “[i]t could be
argued Boelen does not explicitly teach [] the cut-off machine being a
machine that is separated from the trimming device; and the cutting-off
machine being actuated independent [of] the trimming device.” Id. As
discussed in the preceding section, we find that Boelen does not by itself
teach a cut-off machine that is separated from a trimming device.
The Examiner takes the position that the use of a cut-off machine that
is separate from an end trimming machine is “old and well known in the art
such as taught by Newnes and Hale.” Final Act. 6. The Examiner concludes
that it would have been obvious to modify the Boelen cutting apparatus so as
to separate and actuate separately the trimming device and the cut-off
machine, “in order to individually run and control the trimmer device and
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the cut-off machine and perform individual maintenance and removal of the
trimmer device and the cut-off machine when [] needed.” Id. at 7.
Appellant argues that the rejection does not establish that the proposed
modification, “would have provided any benefit or additional or different
function, such that the additional cost of a separate cut-off machine and
space requirements required for a separate cut-off machine,” such that the
proposed modification would have been obvious. Appeal Br. 14. The
argument does not address at least the Examiner’s position that separating
the trimming device from the cut-off machine would allow for individual
maintenance of each piece of equipment, and would allow for replacement
(removal) of each piece of equipment individually.
Appellant later argues that there would be “costs associated with
having to maintain more machines,” which would weigh against making the
proposed modification. Reply Br. 10. This is merely attorney argument,
and there is no evidence pointing to any increase in cost attendant to
providing a trimming device separate from a cut-off machine, and,
furthermore, does not address the potential benefit of being able to perform
maintenance on the two units individually and independently. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine”).
We are therefore not persuaded that the Examiner has failed to
provide an adequate reason, supported by rational underpinnings, to modify
Boelen as proposed.
Appellant additionally identifies specific differences between the
claimed method and each of Boelen, Newnes, and Hale, individually. Id.
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at 14–15. Appellant does not, however, assert that the modification
proposed by the Examiner would fail to teach one or more limitations found
in claim 1. Among the differences noted by Appellant is that both Newnes
and Hale are directed to trimming and cutting lumber, and not elongated
paper rolls. Although not argued specifically in the arguments presented for
claim 1, Appellant maintains, in an argument directed to claim 9, that a
person of ordinary skill in the art would not combine Newnes or Hale with
Boelen, in that “[c]utting paper rolls requires a lower blade speed when
compared with lumber, which requires significantly higher blade speeds.
Using an arrangement for cutting lumber in a device for cutting paper rolls
as featured in Boelen would ruin the paper rolls due to the higher speed of
the blades used to cut lumber.” Appeal Br. 17.
Appellant misunderstands the Examiner’s proposed combination. The
Examiner does not propose to bodily incorporate the specific trimming
devices from Newnes or Hale into the Boelen apparatus, but rather employs
Newnes and Hale as evidence that it was known in the art to provide
trimming devices that are separate, and separately controllable, from the
main cutting or cutting-off device, and proposes to modify Boelen so as to
have separate trimming and cutting-off devices. The speed of the cutting
member of Newnes and/or Hale, if indeed substantially different than the
speed at which a paper roll cutting member operates, is not a factor in the
Examiner’s application of the teachings of Newnes and Hale to Boelen.
Appellant additionally argues that that the Boelen apparatus “provides
a simultaneous trimming and subdividing of a roll, which is very different
from the present invention.” Reply Br. 9–10; see also, Appeal Br. 18. This
is something of a mischaracterization of the operation of Boelen. Although
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Boelen does perform trimming of elongated paper rolls and cutting of those
rolls into a plurality of smaller rolls on the same piece of equipment, Boelen
also expresses that it is desired to complete each cut (including the end trim)
prior to commencing a subsequent cut, and thus there is not a simultaneous
trimming and subdividing of a roll. See Boelen 1:54–62; 2:18–29
(discussing one end being cut before starting the cutting of the next portion;
displacement of neighboring blades/discs to achieve same). Contrary to the
process being “very different,” as argued in the Reply Brief, Appellant as
much as admits that Boelen’s process “is essentially what is done by
Appellant’s claimed apparatus wherein the trimming device is a separate
element from the cutting-off machine.” Appeal Br. 18. Boelen’s disclosure
that it is desired to make the series of cuts in succession, rather than
simultaneously, might well be seen as a suggestion that the operations could
be performed at separate stations. In any event, the argument does not
apprise us of Examiner error in the rejection.
As none of Appellant’s arguments evidence Examiner error in
rejecting claim 1, the rejection of claim 1 as being unpatentable over Boelen,
Newnes, and Hale is sustained. Appellant presents no substantive arguments
directed to claim 3 that are not also made with respect to claim 1, from
which claim 3 depends. The rejection of claim 3 is therefore also sustained.
Claim 9
Appellant’s arguments for claim 9 are essentially the same as those
addressed above. Appeal Br. 17–18. For the reasons discussed above, the
arguments do not apprise us of Examiner error, and the rejection of claim 9
as being unpatentable over Boelen, Newnes, and Hale is sustained.

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Claim 15--35 U.S.C. § 103(a)--Boelen/Nystrand/Newnes/Hale
Appellant’s arguments directed to the rejection of claim 15 are
essentially the same as those addressed above. See Appeal Br. 19–21. No
substantive argument directed to the use of Nystrand in this rejection is
presented. Id. For the reasons discussed above, the arguments do not
apprise us of Examiner error, and the rejection of claim 15 as being
unpatentable over Boelen, Nystrand, Newnes, and Hale is sustained.

Claims 9 and 20--35 U.S.C. § 103(a)--Betti/Matsumoto/Huey-Miin/
Friedburg/Newnes/Hale
The Examiner provides findings regarding the teachings of the
references employed in this rejection, and concludes that it would have been
obvious to modify the Betti apparatus to include a trimming machine as
taught by Matsumoto, “in order to trim the waste or uneven finish on both
ends of the rolls prior to cut-off [of] the rolls into a plurality of rolls.” Final
Act. 9–11. The Examiner does not articulate any reason as to why the
modification would have been obvious to a person of ordinary skill in the
art. Id. at 10. Instead, the rejection simply identifies various features that
are known in the art as evidenced by the references cited.
Although it is possible that the Examiner’s position is that the
proposed modification would have been obvious for the same reason set
forth in the rejection above, in which Boelen is the principal reference
proposed to be modified, we do not presume that to be the case. The
respective structures of the Betti roll cutting apparatus and the Boelen roll
cutting apparatus are quite different from each other. Additionally, whereas
Boelen expresses a desire to have the trim cut performed prior to the cutting
of smaller paper rolls from the elongated roll (Boelen 1:54–62), thus
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providing further impetus to separate the trimming operation from the roll-
cutting operation, we do not find any similar disclosure in Betti.
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006); cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[t]o
facilitate review, this analysis should be made explicit”). The rejection at
hand lacks the required articulated reasoning, and the rejection of claims 9
and 20 is therefore not sustained.

Claims 15 and 19--35 U.S.C. § 103(a)--Betti/Nystrand/Matsumoto/Huey-
Miin/ Friedburg/Newnes/Hale
This rejection suffers from the same infirmities as the rejection
discussed immediately above, and the rejection is thus also not sustained.

Claims 9, 15, 19, and 20--35 U.S.C. § 103(a)--Nystrand/Matsumoto/Huey-
Miin/Friedburg/Newnes/Hale
This rejection suffers from the same infirmities as the rejection
discussed immediately above, and the rejection is thus also not sustained.

DECISION
The rejection of claims 3, 15, and 19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 3, 15, and 19 under 35 U.S.C. § 112, second
paragraph, as being indefinite is reversed.
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The rejection of claims 1 and 3 under 35 U.S.C. § 102(b) as being
anticipated by Boelen is reversed.
The rejection of claims 1, 3, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Boelen in view of Newnes or Hale, is affirmed.
The rejection of claim 15 under 35 U.S.C. 103(a) as being
unpatentable over Boelen in view of Nystrand, and Newnes or Hale, is
affirmed.
The rejection of claims 9 and 20 under 35 U.S.C. 103(a) as being
unpatentable over Betti in view of Matsumoto, Huey-Miin, Friedburg, and
Newnes or Hale, is reversed.
The rejection of claims 15 and 19 under 35 U.S.C. 103(a) as being
unpatentable over Betti in view of Nystrand, Matsumoto, Huey-Miin,
Friedburg, and Newnes or Hale, is reversed.
The rejection of claims 9, 15, 19, and 20 under 35 U.S.C. 103(a) as
being unpatentable over Nystrand in view of Matsumoto, Huey-Miin,
Friedburg, and Newnes or Hale, is reversed.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 15, 19 § 112 ¶ 1 Written description 3, 15, 19
3, 15, 19 § 112 ¶ 2 Indefiniteness 3, 15, 19
1, 3 § 102(b) Boelen 1, 3
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1, 3, 9 § 103(a) Boelen, Newnes,
Hale
1, 3, 9
15 § 103(a) Boelen, Nystrand,
Newnes, Hale
15
9, 20 § 103(a) Betti, Matsumoto,
Huey-Miin,
Friedburg,
Newnes, Hale
9, 20
15, 19 § 103(a) Betti, Nystrand,
Matsumoto, Huey-
Miin, Friedburg,
Newnes, Hale
15, 19
9, 15, 19,
20
§ 103(a) Nystrand,
Matsumoto, Huey-
miin, Friedburg,
Newnes, Hale
9, 15, 19, 20
Overall
Outcome
1, 3, 9, 15 19, 20

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 IN PART