Ex parte Doucet

Board of Patent Appeals and Interferences

Mar 16, 2001

08429155 (B.P.A.I. Mar. 16, 2001)

We note that appellant (Paper No. 5, page 6) elected the embodiment of1
Figures 2-2b in response to the examiner's election requirement (Paper No. 3,
pages 4-5). While it appears to us that claims 5 and 6 are directed to the
embodiment of Figures 3-3b and claims 7, 13 and 26 are directed to the
(continued...)
1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS J. DOUCET
____________
Appeal No. 2000-0581
Application No. 08/429,155
____________
ON BRIEF
____________
Before FRANKFORT, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3-8, 10, 12-22 and 24-28. Claims 9 and
11, the only other claims pending in this application, stand
withdrawn from consideration under 37 CFR § 1.142(b) as being
drawn to a nonelected species.1
Appeal No. 2000-0581
Application No. 08/429,155
(...continued)1
embodiment of Figures 4-4b, rather than to the elected embodiment, we note
that the examiner has not withdrawn these claims from consideration.
2
BACKGROUND
The appellant's invention relates to a product delivery
apparatus, such as a fan wheel or the like of a printing
press, having replaceable elements (replaceable fan blade
tips, in particular) (specification, page 1). Further
understanding of the invention can be derived from a reading
of exemplary claims 1, 22 and 28, which appear in the appendix
to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Poland et al. (Poland) 3,162,439 Dec. 22, 1964
Marti 4,681,209 Jul. 21, 1987
Breton 5,112,033 May 12, 1992
The following rejection is before us for review.
Claims 1, 3-8, 10, 12-22 and 24-28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Breton in view
of Poland and Marti.
Reference is made to the brief (Paper No. 20) and the
answer (Paper No. 21) for the respective positions of the
Appeal No. 2000-0581
Application No. 08/429,155
3
appellant and the examiner with regard to the merits of this
rejection.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
In rejecting all of the claims on appeal, the examiner
relies on the combined teachings of Breton, Poland and Marti.
The examiner's explanation of the rejection, as set forth on
page 3 of the answer, is as follows:
Breton discloses a device for receiving
signatures 14 from a web and rotatable mounts 15 and
16 with blades and pockets. It would have been
obvious to have included replaceable fan blade tips
in order to ease the maintenance requirements
thereof as taught by Poland et al (71-73).
Moreover, it would have been obvious to have
included aligning means in order to facilitate
assembly as taught by Marti (note the unnumbered
aligning pin means to the left and right of element
18 in Figure 5). Re claims 8, 10, 14-21, 24, 25 and
27, the use of the claimed conventional reinforcing
or other plated material would have been obvious to
one skilled in the art.
Appeal No. 2000-0581
Application No. 08/429,155
4
Breton (Figures 2-8a) discloses several different
embodiments of the two fan arrangement used to receive and
deliver printed products 14. Each of the embodiments is
designed to permit the two fans to cooperate to alternately
receive products in the pockets formed by the fan blades while
preventing the respective blade tips of the fans from
colliding. In the embodiments illustrated in Figures 2-4, for
example, this is accomplished by providing recesses, cutouts
or notches 5, 7, 10 in the fan blades to accommodate the
passage of blade tips of the other fan. In the embodiment
illustrated in Figures 8 and 8a, the tips of the fan blades
are extensible to divert an oncoming printed product or
signature into respective receiving pockets and then
retractable so as to avoid any possibility of a collision.
The disclosed mechanism for effecting the extension and
retraction of the tips comprises a linkage or push rod 44
pivotally connected at one end thereof to the respective
pivotal end tip of the blades of those fans located at one
side of the respective fan arrangements, the linkage having a
cam roller at the other end thereof which follows a suitably
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Application No. 08/429,155
5
configured cam 46 fixed to a stationary side wall of the
machine (column 7, line 52, to column 8, line 16).
In all of the embodiments of fan arrangements disclosed
by Breton, with the exception of the one illustrated in
Figures 8, 8a, the fan blade tips appear to be unitary with
the remainder of the blade. In the Figure 8, 8a embodiment,
the blade tips 35, 36 are pivotally mounted to the blades 37,
38, but the details of this mounting arrangement (for example,
whether it is a
replaceable mounting and includes aligning structure) are not
specified.
Poland discloses a document stacking device including a
drum-like stacking member comprised of a pair of discs 60
mounted in spaced-apart relation on a shaft 61. The discs 60
are formed with arcuate slots 66a, 66b which communicate with
the peripheral surface of the discs and extend part way around
the discs for receiving documents 40 introduced thereinto.
Carried by each of the discs 60 at the entrance of each of the
slots 66a, 66b is a document deflector member 71 made of low
friction material and attached by means of a leaf spring 72 to
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Application No. 08/429,155
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a rib 73 mounted between and secured to the discs near the
beginning of the slots. The deflector 71 is supported to lie
in a cut-away area of the discs 60 at the entrance of each of
the slots 66a, 66b and is formed to provide a deflecting tip
which normally projects beyond the circumferential plane of
the discs so as to intercept a document advancing at higher
speed from the guide plates 39, 41 and direct the document
into the associated slot. See column 3, lines 23-49.
As the leading edge of each successive document being fed
is ejected from guide plates 39, 41 of Poland and into
engagement with the feed rollers 76, one of the deflectors 71
will be located at a rotated position slightly in advance
thereof to thereby intercept the faster feeding document and
direct it into the associated slot of the drum (column 4,
lines 34-45). After a document has been brought into contact
with a stop 101, the continued rotation of the drum acts to
withdraw the document from the slot. The stack of documents
40 is held in upright position on a stacking table 103 by the
periphery of the drum discs 60 and the outer surface of the
deflectors 71. The deflectors 71, when brushing against the
stack, are flexed slightly inwardly to a position where their
Appeal No. 2000-0581
Application No. 08/429,155
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In2
making such a rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968).
7
outer surface will lie within the plane of the drum's
periphery and in which position the associated slot is not
closed off but still retains a sufficient opening for ejection
of a document therefrom (column 5, lines 30-40).
While the deflectors 71 of Poland are resiliently mounted
to the discs 60, Poland gives no express indication that they
are replaceably mounted thereto, as the examiner's rejection
suggests. Moreover, the examiner's basis for concluding that
the deflector tip mounting arrangement (71-73) disclosed by
Poland would ease maintenance is not apparent to us. In any2
event, we perceive in the combined teachings of Breton and
Poland no teaching or suggestion to provide resiliently
mounted blade tips as taught by Poland on the blades of any of
the fan arrangement embodiments of Breton.
The examiner apparently finds no teaching or suggestion
of an aligning means, on either the blade or blade tip as
called for in the claims, in the combined teachings of Breton
Appeal No. 2000-0581
Application No. 08/429,155
8
and Poland and relies for this feature on the additional
teachings of Marti. Marti is directed to an apparatus for
positioning containers placed into a hopper. The apparatus
includes an upper moving disc 11 inclined to the vertical
which carries a series of parts 16 of different
characteristics, which extend radially and which define a
series of spaces designed to accept containers 9 in a lying
position. The parts 16 are joined to the disc 11 by inserting
an extreme axial section 18 into one of female sections 19
located in equidistant series on the disc 11 (column 7, lines
13-16). The examiner directs our attention to the "unnumbered
aligning pin means to the left and right of element 18 in
Figure 5."
Even assuming that the elements of Marti's parts 16
alluded to by the examiner are aligning pins, we are at a loss
to understand why one of ordinary skill in the field of
appellant's invention would have found any suggestion therein
to use aligning pins in mounting a fan blade tip to a fan
blade as the examiner proposes.
In establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
Appeal No. 2000-0581
Application No. 08/429,155
9
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, e.g., Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
For the reasons discussed supra, we find no teaching or
suggestion to combine the applied references in the manner
proposed by the examiner. Moreover, even if the references
were combined as the examiner proposes, it is not apparent to
us, and the examiner has not explained, how appellant's
claimed invention would result. In this regard, the examiner
has not pointed out where in the references the attaching
devices of the blades (claim 1), the mounting devices of the
blades (claim 22) or the attaching device and fastening means
of the blade tips (claim 28) are taught or suggested.
Appeal No. 2000-0581
Application No. 08/429,155
10
In light of the foregoing, we shall not sustain the
examiner's rejection of claims 1, 3-8, 10, 12-22 and 24-28.
REMAND TO THE EXAMINER
The application is remanded to the examiner for
consideration of the following.
In reviewing appellant's claims and specification, we
note the use of claim terminology such as "attaching
device(s)" for mounting replaceable fan blade tip(s) (claims 1
and 28), "aligning means for aligning [the fan blade tips with
the fan blades]" (all claims), "mounting device for receiving
a fan blade tip" (claim 22) and "fastening means for fastening
the replaceable fan blade tip to the fan blade" (claim 28).
The sixth paragraph of 35 U.S.C. § 112 states:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
Neither the examiner nor appellant has indicated, on the
record, whether any of the above-cited claim recitations
invokes the sixth paragraph of 35 U.S.C. § 112. In any event,
even if these limitations are interpreted as falling under the
Appeal No. 2000-0581
Application No. 08/429,155
11
sixth paragraph of 35 U.S.C. § 112, appellant is still subject
to the requirement in the second paragraph of 35 U.S.C. § 112
that a claim "particularly point out and distinctly claim" the
invention. As stated in In re Dossel, 115 F.3d 942, 946, 42
USPQ2d 1881, 1885 (Fed. Cir. 1997) (citing In re Donaldson, 16
F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994)),
if one employs means-plus-function language in a
claim, one must set forth in the specification an
adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly
claim the invention as required by the second
paragraph of section 112.
If the examiner determines that any of the above-noted
recitations does invoke the sixth paragraph of 35 U.S.C. §
112, it is necessary to ascertain what structure in the
specification corresponds to that language.
Turning first to the "attaching device(s)" recitation,
appellant's specification states, on page 5, that
[a]n attaching device, represented as a mounting
area 16, is defined by a plane where both fan blade
14 and replaceable fan blade tip 18 contact each
other. A clip 20, as shown in Figure 2b, can be
included on the replaceable tip 18 for engaging an
aperture 17 (Fig. 2b) in the mounting area of fan
blade 14.
Appeal No. 2000-0581
Application No. 08/429,155
12
In describing the embodiment of Figures 3a, 3b, wherein a
threaded receptacle 23 is provided, appellant's specification
does not use the language "attaching device." However, the
specification does state on page 6 that
[b]y means of any fastening device such as a screw
28 or the like, the fan blade tips 24 and 25 can be
mounted on fan blade 14. The screw 28 or the like
engages the threaded receptacle 23 provided in the
plastic material as an alternative to the snap-on
device shown in Figs. 2-2b.
These disclosures imply, but do not expressly indicate,
that the attaching device includes cooperating structures on
both the blades and the blade tips.
With regard to the "aligning means" limitation,
appellant's specification discloses, in the first and second
embodiments, an aligning pin 19 on the tip. Presumably the
aligning pin is to be aligned with an associated recess on the
blade. Thus, the aligning means also appears to include
structures on both the blades and the blade tips.
With regard to the embodiment of Figures 4-4b,
appellant's specification describes an arrangement wherein one
of a cam and a recess is disposed on the tip and the other of
the cam and recess is disposed on the blade, but does not use
Appeal No. 2000-0581
Application No. 08/429,155
13
the terminology "attaching device." In this same embodiment,
appellant's specification also discloses abutting surfaces 36,
37 on the blade and abutting surfaces 36, 37 on the blade
tips. Appellant's claim 7 suggests that the "attaching
devices" include at least the recesses on the fan blades and
claim 13 suggests that the "aligning means" includes at least
one of the abutting surfaces on the blades. As the attachment
function appears to result only from the cooperation of both
the cam and the recess, it appears that the "attaching
devices" require the cams on the tips, as well as the recesses
on the blades. Similarly, in that the aligning function
appears to result only from engagement of both the abutting
surfaces of the blade and the abutting surfaces of the tips,
the "aligning means" seems to require both structures.
In summary, from the above disclosure, it appears that
each of the attaching device and aligning means includes
cooperating structures on both the blades and the blade tips.
In this regard, we note that claim 1 does not positively
recite the tips and that claim 28 does not positively recite
the blades. Accordingly, it is not clear whether (1) claim 1,
in reciting attaching devices and aligning means, implicitly
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Application No. 08/429,155
14
includes the tips and claim 28, in reciting an attaching
device and aligning means, implicitly includes the blade or
(2) an aperture, receptacle, recess, clip, screw or cam
disposed on either the blade or tip constitutes an "attachment
means" itself, and an aligning pin, a recess or an abutting
surface disposed on either of the blade or tip constitutes an
"aligning means" itself, without the cooperating structure on
the other of the tip or blade.
Additionally, we note that claim 28 recites an "attaching
device" and a "fastening means" as separate elements. This is
in contrast to, for example, claim 5, which recites the
attaching devices as further including a fastening means. In
this regard, this recitation in claim 28 also appears to be at
odds with page 6 of the specification, which seems to imply
that the fastening means and the threaded receptacle make up
the attaching device (the alternative to the snap-on
arrangement of the first embodiment).
Moreover, the screw 28 or the like, the only "fastening
means" disclosed in the specification, does not appear to be
part of the blade tip as disclosed. Rather, the screw or the
like fastening means appears to be a separate element which
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Application No. 08/429,155
15
may be used with the tip to help attach it to a blade. This
raises the question whether the various elements recited in
claim 28, the attaching device, aligning means and fastening
means, are required to be disposed on or part of the blade tip
itself or whether they can be part of another structure
capable of use with the tip.
In light of the above discussion, we remand the
application to the examiner to ascertain (1) whether each of
the above-cited "device" or "means" limitations invokes the
sixth paragraph of 35 U.S.C. § 112 and (2) the disclosed
structure in the specification which corresponds to each
limitation that invokes the sixth paragraph of 35 U.S.C. §
112. If the examiner is not able to ascertain, with
certainty, what structure corresponds to any limitations that
invoke the sixth paragraph of 35 U.S.C. § 112, a rejection of
the claims under the second paragraph of 35 U.S.C.
§ 112 may be appropriate, as discussed above. Additionally,
upon remand, the examiner should also address the specific
questions pertaining to claim 28 raised above.
After ascertaining the structure which corresponds to the
claim limitations so that the scope of the claims can be
Appeal No. 2000-0581
Application No. 08/429,155
U.S. Pat. No. 2,014,933, issued to Harless et al. on September 17,3
1935, cited by the examiner in Paper No. 3.
U.S. Pat. No. 4,357,008, issued Nov. 2, 1982, cited by appellant in4
Paper No. 2.
16
determined, the examiner should review the Poland, Harless3
and Campbell patents, as well as other prior art references4
of which the examiner may be aware, to determine whether the
claims are anticipated by or unpatentable over these
references.
In particular, the examiner should reconsider the Poland
patent to see whether any or all of the claims are anticipated
or rendered unpatentable thereby. Poland discloses a document
stacking device including a drum-like stacker comprised of a
pair of discs 60, as discussed above. The portions of the
discs located radially outwardly of the arcuate slots 66a, 66b
appear to us to be "fan blades" which define pockets (the
slots) for receiving signatures (documents 40). Appellant
(brief, page 5) contends that the deflectors 71 and leaf
springs 72 are attached to the discs via rivets which must be
destroyed in order to remove the deflectors. The examiner
should assess, on the record, even assuming arguendo that
appellant is correct with regard to the rivets, whether the
Appeal No. 2000-0581
Application No. 08/429,155
17
deflectors 71 are nonetheless "replaceable" or, if such an
attachment is found to be too permanent to render the
deflectors "replaceable," whether it would have been obvious
to one of ordinary skill in the art to replace the rivets with
other less permanent fasteners, such as screws or the like.
The examiner should also determine whether Poland's assembly
of the discs, rib, leaf spring and deflector comprises
structure which meets the attaching devices, mounting device,
aligning means and fastening means limitations set forth in
the claims.
Harless discloses a folding machine comprising discs 15
to which a plurality of blades 17 are attached (by screws, as
illustrated). The blades 17, together with the discs, form
product-receiving pockets 18. With regard at least to claim
28, the examiner should consider whether Harless is an
anticipatory reference. For example, do the two bores for
receiving the screws correspond, respectively, to the
"attaching device" and "aligning means," with the screws
corresponding to the "fastening means," as these terms are
interpreted in light of appellant's specification?
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Application No. 08/429,155
18
The examiner should make similar determinations with
regard to Campbell. In Campbell's apparatus, the innermost
end of each of a plurality of fingers 16 is bent at a 90
degree angle and inserted in a corresponding hole 20, as shown
in Figure 4. Each of the fingers 16 is held in position by a
retaining screw 22 threaded into the side of the support
plates 12, 14.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3-8, 10, 12-22 and 24-28 under 35 U.S.C. § 103 is
Appeal No. 2000-0581
Application No. 08/429,155
19
reversed and the application is remanded to the examiner for
consideration of the issues discussed above.
REVERSED AND REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2000-0581
Application No. 08/429,155
20
Frederick G. Michaud, Jr.
Burns, Doane Swecker & Mathis
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404