Ex Parte Elgee et al

Board of Patent Appeals and Interferences

Feb 13, 2009

10442517 (B.P.A.I. Feb. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN B. ELGEE and GEOFF WOLTON
____________

Appeal 2009-0074
Application 10/442,517
Technology Center 2800
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Decided:1 February 13, 2009
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0074
Application 10/442,517

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 7, 9, 11, 12, 19, 20, 22, and 30. All other pending
claims have been withdrawn pursuant to the Examiner’s restriction
requirement. (App. Br. 2).2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a detection mechanism operable to
detect potential collisions between print media and a printhead in a printing
device. (Spec. Abstract; Fig. 3B).
Claim 7, illustrative of the invention, follows:
7. A printing device, comprising:

a printhead positioned on a carriage conveyance mechanism;

a rotary printer drum operable to hold print media on a surface
of the drum to move the print media to the printhead; and

a detection mechanism disposed upstream from the carriage
conveyance mechanism along an arcuate media path having two or
more elongate detect members, each having a first end that is attached
to a rotatable member and a second end opposing the print media,
arrayed transversely across the media path and operable to detect
potential collisions between the print media and the printhead.

2 Appellants’ Brief (filed, November 11, 2007) (“App. Br.”) and Reply Brief
(filed March 27, 2007) (“Reply Br.”), and the Examiner’s Answer (mailed
January 25, 2007) (“Ans.”), detail the parties’ positions. See also the Office
Action mailed January 4, 2005 (listing restricted claims withdrawn from
consideration).
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Application 10/442,517

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The Examiner relies on the following prior art references:
Gross US 5,302,974 Apr. 12, 1994
Hiramatsu US 5,541,626 Jul. 30, 1996
Kubo US 6,074,056 Jun. 13, 2000
Mohringer US 6,672,587 B1 Jan. 6, 2004 (filed May 25, 2000)

The Examiner rejected claims 7, 9, 11, 19, 20, 22, and 30 under 35
U.S.C. § 103(a) as obvious based upon Hiramatsu, Mohringer and Kubo.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
based upon Hiramatsu, Mohringer, Kubo, and Gross.

ISSUE
This appeal presents the following issue:
Did Appellants demonstrate that the Examiner erred in finding that
Mohringer teaches “a detection mechanism . . . having two or more elongate
detect members, each having a first end that is attached to a rotatable
member and a second end opposing the print media” as recited in
representative claim 7? 3

PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness . . . .” In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998)).

3 Appellants do not present separate patentability arguments with respect to
claims 9, 11, 19, 20, 22, and 30. Accordingly, claim 7 represents the claims
for this group. See 37 C.F.R. § 41.37(c) (1) (vii).
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Application 10/442,517

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During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). “We have cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even it is the only
embodiment described, absent clear disclaimer in the specification.” In re
American Academy of Science Tech. Center, 367 F.3d 1359, 1369 (Fed.
Circ. 2004). “It is the applicants’ burden to precisely define the invention,
not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).

FINDINGS OF FACT (FF)
1. Mohringer discloses a detection mechanism having at least three different
sensing elements 24, each attached via a lever 27, holder 26 and adjustable
locking pin 29 at a first end, to pivotally movable cross member 28. Lever
27 is pivotally mounted on holder 26 which is axially displaceable on
member 28, via adjustable locking pin 29. (Mohringer, Figs. 2, 3; col. 3, l.
64 to col. 4, l. 30).
2. A plan view of the sensing elements 24, lever 27, holder 26, and pin 29
depicts the four items as elongate from element 24 to the end at holder 26
and pin 29.4 (Id., Fig. 3).

4 Lever 27 and holder 26 are not numbered in this view, but their depiction
in Figure 3 is implied from Figure 2.
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3. Each sensing element 24 can be “constructed as a rotatably mounted
roller, other forms, such as a sliding shoe, a stirrip, a sensing pin or the like
. . . .” (Id., col. 3, ll. 63-65).
4. Each roller 24 abuts printing sheets 7. (Id., col. 4, ll. 23-33, Fig. 1).

ANALYSIS
Appellants assert (App. Br. 9) that Mohringer’s detection elements 24,
as rollers, do not constitute elongate detection members, because they are
“torus-like.” Appellants’ argument is without merit because Mohringer’s
“sensing pin or the like” (FF 3) each constitute an alternative elongate
member meeting the disputed limitation of the claim. Each pin is implicitly
connected at a first end to lever 27, or, eventually, to pivotable member 28,
with either the lever 27 or member 28 constituting the rotatable member
recited in claim 7. The second end of each detection pin opposes the print
media 7 – as a replacement to roller 24 – as required by claim 7. (See FF 3,
4).
Alternatively, as the Examiner generally found (see Ans. 4, 9-10),
each roller 24, when considered together with lever 27, holder 26 and
adjustable locking pin 29 as one of the recited detect members, also has an
elongate shape, as depicted in the view of Figure 3 (FF 2). Each detect
member (24, 27, 26, and/or 29) is connected at the first end 26/29 to
pivotally movable cross member 28 - the “rotatable member” recited in
claim 7. The second end of each detect member, at roller 24, opposes the
print media 7. (FF 1, 2, 4).
Appeal 2009-0074
Application 10/442,517

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Appellants’ argument that the detect members “can be constructed in
many other forms, such as one or more strips, membranes, or studs” (App.
Br. 9, citing Spec. 10: 20-21) does not demonstrate any distinction over
Mohringer’s elongated members as described supra. To the contrary, such a
wide variety of disclosed elongate forms bolsters the finding above that
Mohringer’s different embodiments meet the disputed elongate detect
members set forth in claim 7. As such, Appellants have failed to
demonstrate the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 7, and also
the rejection of claims 9, 11, 19, 20, 22, and 30, which were not separately
argued. Appellants also do not present separate patentability arguments with
respect to the obviousness rejection of dependent 12 based on Hiramatsu,
Mohringer, Kubo, and Gross (App. Br. 10). Accordingly, for the reasons
outlined above, we also sustain the rejection of claim 12.

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding
that Mohringer teaches “a detection mechanism . . . having two or more
elongate detect members, each having a first end that is attached to a
rotatable member and a second end opposing the print media” as recited in
representative claim 7.

DECISION
We affirm the Examiner’s decision rejecting claims 7, 9, 11, 12, 19,
20, 22, and 30.
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Application 10/442,517

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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

msc

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