Ex parte Benedict

Board of Patent Appeals and Interferences

Sep 28, 1998

08565457 (B.P.A.I. Sep. 28, 1998)

Application for patent filed November 30, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LAWRENCE R. BENEDICT
_____________
Appeal No. 97-2904
Application 08/565,4571
______________
ON BRIEF
_______________
Before CALVERT, Administrative Patent Judge, and McCANDLISH,
Senior Administrative Patent Judge, and CRAWFORD,
Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 2, 4 through 9 and 11 through 14. No
other claims are pending in the application.
Appeal No. 97-2904
Application 08/565,457
2
Appellant’s invention relates to a sheet-advancing
apparatus (claims 1, 2 and 4 through 7) and to a printing
machine (claims 8, 9 and 11 through 14). Claims 1 and 8, which
are the only independent claims on appeal, both call for a
transport (70), a controller (95) and means (100-103) for
sensing a sheet advancing on the transport.
According to the independent claims, the transport has
two modes of operation. In the first mode of operation, a
sheet is releasably secured to the transport, and in the
second mode of operation, the frictional force between the
sheet and the transport is reduced to permit relative movement
between the sheet and the transport. The independent claims
both recite that the controller is responsive to the sensing
means to switch the transport between the two modes of
operation. Appealed claim 8 is more limited than appealed
claim 1 in that it recites that the transport advances the
sheet to a transfer station (J) where the sheet receives a
visible image from a recording medium (10). According to
appellant’s specification, the purpose of permitting relative
movement between the sheet and the transport in the second
Appeal No. 97-2904
Application 08/565,457
A translation of this reference is attached. According to this translation,2
Ikeda is listed as the inventor’s first name, but since both the examiner and appellant
have referred to this reference as Ikeda, we too shall refer to it as Ikeda.
A translation of this reference is also attached. 3
3
mode of operation is to allow the sheet to be moved into
alignment with a registration edge.
A copy of the appealed claims is appended to
appellant’s brief.
In rejecting the appealed claims, the examiner relies
upon the following references:
Dragstedt 4,362,380 Dec. 7,
1982
Ikeda (Japanese Kokai 2-221043 Sep. 4, 19902
Patent)
Horikawa (Japanese Kokai 4-85234 Mar. 18, 19923
Patent)
The grounds of rejection are as follows:
Appeal No. 97-2904
Application 08/565,457
4
1. Claim 1 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Horikawa.
2. Claims 2 and 4 through 7 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Dragstedt in view of
Horikawa.
3. Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Horikawa and
Ikeda.
4. Claims 9 and 11 through 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combined teachings
of Dragstedt, Horikawa and Ikeda.
Reference is made to the examiner’s answer for details of
these rejections.
Considering first the § 102(b) rejection of claim 1, it
Appeal No. 97-2904
Application 08/565,457
5
is well established patent law that for a reference to be
properly anticipatory, each and every element of the rejected
claim must be found either expressly described or under the
principles of inherency in the applied reference. See RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984). It follows that the
absence from the reference of any element of the claim negates
anticipation of that claim by the reference. Kloster
Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ
81, 84 (Fed. Cir. 1986).
In the present case, Horikawa discloses a sheet-
advancing apparatus having a transport 92, a controller 123
and means in the form of at least one sensor 127 for sensing a
sheet advancing on the transport. Like appellant’s disclosed
transport, Horikawa’s transport comprises a perforated
transport belt 96 extending over at least one suction chamber
108 which is connected through a solenoid operated valve 134
to a vacuum pump 130. Similar to appellant’s apparatus,
Horikawa’s controller is responsive to sensor 127 to open and
Appeal No. 97-2904
Application 08/565,457
6
close valve 134 to thereby switch the transport between two
modes of operation. In one mode of operation, valve 134 is
open to provide a high negative pressure for retaining the
sheet against the conveyor belt. In the other mode of
operation, in which the sensor senses a pressure change caused
by transportation of the sheet, the controller closes valve
134 to reduce the negative pressure in chamber 108.
The examiner concedes that Horikawa does not expressly
disclose that the reduced negative pressure in the second
operating mode is small enough to permit relative movement
between the sheet and the transport. He nevertheless maintains
on page 4 of the answer that such a reduction in the negative
pressure will inherently permit relative movement between the
sheet and the transport as recited in claim 1.
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 feature necessarily flows from the teachings of the
applied reference. See Ex parte Levy, 17 USPQ2d 1461, 1464
Appeal No. 97-2904
Application 08/565,457
7
(BPAI 1990) and cases cited therein.
In the present case, the examiner has taken the position
that the reduced negative pressure in Horikawa’s suction
chamber in the second operating mode described supra will
inherently reduce the frictional force between the sheet and
the perforated transport belt to permit relative movement
between the sheet and the belt. While a reduction in negative
pressure in the suction chamber is likely to result in a
reduction of the frictional force between the sheet and the
transport belt, the examiner has made no factual showing or
advanced no technical reasoning to establish that the
frictional force necessarily will be reduced to a sufficient
extent to allow relative movement between the sheet and the
transport belt. Certainly, Horikawa does not express any
desirability of permitting such a relative movement in the
second operating mode of the transport system. The possibility
or even the probability that such a condition will occur is
not enough. As stated in In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981), inherency may not be established by
possibilities or probabilities.
Appeal No. 97-2904
Application 08/565,457
8
For the foregoing reasons, we cannot sustain the §
102(b) rejection of claim 1.
Turning now to the § 103 rejection of dependent claims
2 and 4 through 7, the patentability of which appellants has
argued as a group, there is no dispute that Dragstedt
discloses a photocopying machine having a vacuum type sheet
transport system 32 for advancing a sheet, particularly a
document to be copied, into engagement with a registration
member 34. There also is no dispute that Dragstedt’s transport
system comprises side-by-side perforated belts 70 and 72
extending along a pair of suction chambers 82 and 84 for
gripping and advancing the sheet. Chamber 84 is directly
connected to a vacuum pump 90 or blower, as it is called, to
apply a relatively low vacuum in chamber 84. Chamber 82, on
the other hand, is connected to vacuum pump 90 through
solenoid actuated valves 102 and 116 which are under the
control of a controller 136 to switch the transport system
between two operating modes.
In the first mode of operation, the controller 136
Appeal No. 97-2904
Application 08/565,457
9
operates valve 116 to connect chamber 82 to pump 90 to thereby
establish a high vacuum level in chamber 82 for lifting the
sheet from a platen 12 and for securely retaining it against
belts 70 and 72. In the second mode of operation, which occurs
as the sheet approaches the registration member 34, controller
136 operates valve 136 in the reverse fashion to disconnect
chamber 82 from pump 90 and to restore atmospheric pressure to
chamber 82. The lower vacuum level in chamber 84 is sufficient
to retain the sheet against belts 70 and 72 to allow the sheet
to strike registration member 34 without damaging the sheet.
Appellant argues that Dragstedt is deficient for the
following reasons:
This patent does not teach that the sheet
slips on the belt when it engages the
registration member. This patent also does
not teach means for sensing the sheet
advancing on the transport and a controller
responsive to the sensing means for
switching the transport between modes of
operation. Furthermore, there is no
teaching contained in this patent that the
frictional force between the sheet and the
transport is reduced to permit relative
movement between the sheet and the
transport. At most, this reference teaches
Appeal No. 97-2904
Application 08/565,457
10
that the normal force due to the vacuum is
changed as the sheet advances with the belt
from the first plenum to the second plenum.
This patent does not teach that it is
desirable to have relative movement between
the sheet and the transport in one mode of
operation and no relative movement between
the sheet and transport in another mode of
operation. [brief, page 11.]
Contrary to appellant’s arguments as quoted supra,
Dragstedt expressly teaches in column 6, lines 39-44, that
when the sheet strikes and is held against registration member
34 in the second operating mode (in which the sheet is
retained against belts 70 and 72 only by the relatively low
vacuum level in chamber 84), slippage of the sheet relative to
belts 70 and 72 will occur because “belts 70, 72 preferably
continue to move after the leading edge of the sheet strikes
member 34 . . .” Because Dragstedt expressly allows such
slippage, it follows that the frictional force between the
sheet and the transport belts will be reduced in the second
operating mode.
As for appellant’s argument regarding the sensing means
as quoted supra, Dragstedt implicitly discloses the provision
Appeal No. 97-2904
Application 08/565,457
11
of sensing means for sensing the advancement of the sheet in
view of the description in column 6, lines 19-25, where it is
stated that the controller 136 provides the programmed
operating sequence “in response to machine operator inputs and
to sensing of various functions” as is known in the art. In
any event, Horikawa suggests the common practice of utilizing
sensors to sense the advancement of a sheet for supplying
inputs to a controller in a reproducing machine.
For the forgoing reasons, we are satisfied that the
subject matter of claim 2 would have been obvious in view of
the combined teachings of Dragstedt and Horikawa, if not
anticipated by Dragstedt alone. We will therefore sustain the
§ 103 rejection of claim 2. We will also sustain the § 103
rejection of claims 4 through 7 since these claims have not
been argued separately of claim 2. See In re Nielson, 816 F.2d
1567, 1571, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and In re
Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979).
We cannot, however, sustain the § 103 rejection of
claims 8, 9 and 11 through 14. Unlike claims 1, 2 and 4
Appeal No. 97-2904
Application 08/565,457
12
through 7, claim 8 is limited to a printing machine in which
the sheet, which is advanced by the transport, is the sheet
which receives the image at a transfer station. We find no
suggestion in the teachings of Ikeda and Horikawa of utilizing
Horikawa’s transport system in Ikeda’s copier for advancing
the copy sheet to the transfer station. Furthermore, even if
these references were combined in the manner proposed by the
examiner, the result would not arrive at the invention defined
in claim 8 because, as previously noted, Horikawa does not
expressly or inherently disclose the feature of permitting
relative movement between the sheet and the transport in one
of the modes of operation. Dragstedt, which is relied on in
the rejection of claims 9 and 11 through 14, but not in the
rejection of claim 8, does not rectify this shortcoming
because Dragstedt discloses the utilization of the transport
system for advancing the original document from which the
image is copied, not the copy sheet which receives the
transferred image.
Under the provisions of 37 CFR § 1.196(b), the
Appeal No. 97-2904
Application 08/565,457
13
following new ground of rejection is entered against claim 1:
Claim 1 is rejected under 35 U.S.C. § 103 as being
unpatentable over Dragstedt in view of Horikawa and the prior
art discussed in the paragraph bridging pages 2 and 3 of
appellant’s specification. Based on our foregoing analysis of
the Dragstedt patent, which we adopt here in our new
rejection, Dragstedt discloses a sheet-advancing apparatus
comprising a transport as defined in the first clause of claim
1. This reference also discloses a controller in the form of
unit 136 which is responsive to inputs to switch the transport
between its two modes of operation as discussed supra.
Although Dragstedt lacks an express teaching of employing
sensors to sense the sheet advancing on the transport, this
reference implicitly discloses a sensing means as claimed for
the reasons stated above.
In any event, as noted supra, Horikawa suggests the
common practice of utilizing sensors to sense the advancement
of a sheet for supplying inputs to a controller in a
reproducing machine. This teaching of Horikawa is reinforced
Appeal No. 97-2904
Application 08/565,457
14
by the prior art described in the paragraph bridging pages 2
and 3 of appellant’s specification where it is noted that
sensors are employed to detect an advancing sheet in an
electrophotographic printing machine. Thus, even if it is
assumed arguendo that Dragstedt lacks a disclosure of
appellant’s claimed sensing means, the teachings of Horikawa
taken alone or together with the prior art described on pages
2 and 3 of appellant’s specification would have made it
obvious to employ a sensing means for sensing an advancing
sheet as a convenient and economical way of supplying the
necessary inputs to the controller for switching the transport
between its two modes of operation.
In summary, (1) the examiner’s decision rejecting claim
1 under § 102(b) is reversed, (2) the examiner’s decision
rejecting claims 2, 4 through 9 and 11 through 14 under § 103
is affirmed with respect to claims 2 and 4 through 7, but is
reversed with respect to claims 8, 9 and 11 through 14, and
(3) a new ground of rejection has been introduced against
claim 1 pursuant to the provisions of 37 CFR § 1.196(b).
Appeal No. 97-2904
Application 08/565,457
15
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,122
(Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
Appeal No. 97-2904
Application 08/565,457
16
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
Appeal No. 97-2904
Application 08/565,457
17
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
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
37 CFR § 1.196(b)
Appeal No. 97-2904
Application 08/565,457
18
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
HEMc/yrt
Ronald Zibelli
Xerox Corporation
Xerox Square
Rochester, NY 14644