Ex Parte Callahan et al - Page 8




             Appeal No. 2005-2632                                                                      8                                      
             Application No. 09/768,736                                                                                                       




             Concerning dependent claims 2, 3 and 17 through 20, appellants contend (brief,                                                   
             page 7) that John does not disclose the limitation that the ink application cylinder is                                          
             driven directly by a motor. While that may be true of John, the examiner correctly points                                        
             out that this aspect of the invention is clearly set forth in Richards, wherein it is indicated                                  
             that the motors (10a) and (10b) seen in Figure 1 may directly drive the ink application                                          
             cylinders (8a) and (8b). Note particularly, column 4, lines 9-11 and column 4, lines 18-                                         
             21. As for the assertion in the reply brief that John does not teach the requirement of                                          
             claims 3 and 18 that the ink form roll and the first plate cylinder have the same                                                
             diameter, we agree with the examiner that the teaching in John at column 2, lines 47-61                                          
             that the ink form roll should have a diameter of “about 99% of the diameter of the plate                                         
             cylinder” (emphasis added), would have encompassed and/or been suggestive to one                                                 
             of ordinary skill in the art of an arrangement where the ink form roll and the first plate                                       
             cylinder have the same diameter. Thus, we will also sustain the examiner’s rejection of                                          
             claims 2, 3 and 17 through 20 under 35 U.S.C.                                                                                    
             § 103(a).                                                                                                                        


             As for dependent claims 4 through 6, 8 and 16, appellants focus only on the                                                      
             arguments made above concerning the combination of Richards and John as applied to                                               
             independent claims 1 and 14. Thus, finding no argument for the separate patentability of                                         

















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