Ex Parte Elgee et al

Board of Patent Appeals and Interferences

Sep 15, 2011

11021650 (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN B. ELGEE and
STEVE O. RASMUSSEN
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Appeal 2009-012737
Application 11/021,650
Technology Center 3600
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 12-14, 18, 20, 21, 24-33, 35 and 36. The 2
Examiner rejects under 35 U.S.C. § 103(a): 3
claims 12-14 as being unpatentable over Tranquilla (US 4
6,595,517 B1, issued Jul. 22, 2003) and Elgee (US 6,407,678, 5
issued Jun. 18, 2002);6
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claims 12-14, 18, 20, 21, 26, 29, 31, 33 and 35 as being 1
unpatentable over Otsuka (US 2002/0020693, publ. Feb. 21, 2
2002) and Elgee; 3
claims 24, 27 and 30 as being unpatentable over Otsuka, 4
Elgee and Hashikawa (US 5,454,502, issued Oct. 3, 1995); 5
claims 25, 28 and 32 as being unpatentable over Otsuka, 6
Elgee and Zwettler US 5,893,526, issued Apr. 13, 1999); 7
claim 36 as being unpatentable over Otsuka, Elgee and 8
Shiau (US 2002/0084580 A1, publ. Jul. 4, 2002); and 9
claims 18, 20 and 21 as being unpatentable over Claassen 10
(US 5,833,226, issued Nov. 10, 1998) and Elgee. 11
Claims 1-11, 15-17, 19, 22, 23 and 37-40 are cancelled. We have 12
jurisdiction under 35 U.S.C. § 6(b). 13
We REVERSE. 14
Claim 12 is illustrative of the claims on appeal: 15
12. A print registration apparatus, 16
comprising: 17
means for contacting print media with an 18
outer surface of a passive loop; 19
means for driving the passive loop about a 20
course of travel defined by a guide by advancing 21
the print media through a printer; and 22
means for measuring print media 23
registration during printing by measuring 24
movement of the passive loop by optically sensing 25
a pattern defined on an inner surface of the passive 26
loop. 27
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Rejection of Claims 12-14 as being Unpatentable over Tranquilla and Elgee 1
Claim 12 positively recites a passive loop or its equivalent as an 2
element of the claimed subject matter. For example, claim 12 recites 3
“means for contacting print media with an outer surface of a passive loop.” 4
The Appellants concede that the corresponding structure described in the 5
Specification includes the passive loop itself. (Br. 2 (identifying the 6
corresponding structure by the reference numerals 206, which refers to a 7
passive loop, and 208, which refers to a guide); see also Spec., para. 8
[0024]).) 9
Tranquilla describes a document transport 100. The document 10
transport 100 includes a large diameter roller 110 and a pinch belt 108 which 11
wraps around a substantial portion of the circumference of the large diameter 12
roller 110. The large diameter roller 110 drives the pinch belt 108. 13
(Tranquilla, col. 2, ll. 58-60.) During a print operation, a portion of a 14
document 102 to be printed is gripped between the large diameter roller 110 15
and the pinch belt 108. (Tranquilla, col. 2, ll. 56-58 and col. 3, ll. 1-8.) 16
Figures 1 and 2 of Tranquilla depict the pinch belt 108 as being 17
mounted over rollers 106c, 112 and 115. Tranquilla describes roller 106c as 18
a driven roller. (Tranquilla, col. 2, ll. 51-53.) One of ordinary skill in the art 19
likely would have understood Tranquilla to describe the pinch belt 108 as 20
being driven by both the large diameter roller 110, through the medium of 21
the document, and by the drive roller 106c. 22
The Examiner finds that Tranquilla’s pinch belt 108 is a passive loop. 23
(Ans. 4.) The Appellants disagree, arguing that “one of ordinary skill in the 24
art would understand a ‘passive loop’ to be a loop or belt that simply 25
receives driving force [from a medium] and does not provide a driving force 26
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to a medium.” (Br. 7.) Since claim 12 recites “means for measuring print 1
media registration during printing by measuring movement of the passive 2
loop,” the passive loop must be sufficiently passive with respect to the print 3
media to allow such a measurement to be made. Since Tranquilla describes 4
the pinch belt 108 as being mounted on the drive roller 106c, Tranquilla’s 5
description of the pinch belt 108 is not sufficiently specific to justify finding 6
that the belt 108 is a passive loop. 7
The Examiner does not identify any other structure described by 8
Tranquilla which might correspond to the passive loop recited in claim 12. 9
Elgee describes a belt encoder system including first and second encoder 10
transducers 70, 72. Each of the first and second encoder transducers 70, 72 11
is adapted to sense encoder indicia 58B associated with a driven belt 58 to 12
precisely move the belt 58 to position a print medium on the belt 58. 13
(Tranquilla, col. 2, ll. 24-31 and 49-59.) The Examiner does not 14
persuasively explain how the combined teachings of Tranquilla and Elgee 15
might have provided one of ordinary skill in the art reason to replace 16
Tranquilla’s pinch belt 108 with a passive loop. We do not sustain the 17
rejections of claims 12-14 under § 103(a) as being unpatentable over 18
Tranquilla and Elgee. 19
20
Rejection of Claims 12-14, 18, 20, 21, 26, 29, 31, 33 and 36 as being 21
Unpatentable over Otsuka and Elgee 22
Claim 12 recites a print registration apparatus including means for 23
measuring print media registration during printing by measuring movement 24
of the passive loop by optically sensing a pattern defined on an inner surface 25
of the passive loop. Claim 18 recites a print media movement apparatus 26
including a tracking mechanism, wherein the tracking mechanism tracks the 27
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print media by tracking the movement of the loop. Claim 29 recites 1
apparatus including a sensor configured to sense movement of the inner 2
surface of a passive loop. 3
Otsuka describes an image forming apparatus including a cylindrical 4
thin heat-resisting film 12. The film 12 is loosely fitted to the outside of a 5
stay 13 in which a heater 17 is disposed. (Otsuka, para. [0055] and [0066].) 6
The cylindrical film 12 transfers heat from the heater 17 to a material sheet 7
11 positioned in a nip N between the film 12 and an elastic pressure roller 9 8
to fix toner on the material sheet 11. (Otsuka, para. [0068] and [0072].) The 9
Examiner concludes that “[p]roviding means for measuring print media 10
registration, as taught by Elgee, on the passive loop (12) of the printer of 11
Otsuka will result in a print registration apparatus having means for 12
measuring print media registration during printing by a print head (including 13
21) of Otsuka.” (Ans. 7.) 14
The Appellants correctly point out that the Examiner has not 15
articulated a persuasive reason why one of ordinary skill in the art familiar 16
with the teachings of Otsuka and Elgee would have seen a need to precisely 17
determine the position of media as it was being heated in Otsuka’s image 18
heating apparatus. (See Br. 9.) Since Figure 1 of Otsuka is schematic 19
(Otsuka, para. [0046]), it is not apparent that one of ordinary skill in the art 20
would have had reason to measure print registration in Otsuka’s image 21
heating apparatus as a means to assure proper registration at the 22
photosensitive body 21. We do not sustain the rejection of claims 12-14, 18, 23
20, 21, 26, 29, 31, 33 and 35 under § 103(a) as being unpatentable over 24
Otsuka and Elgee. 25
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The Examiner does not persuasively explain how the disclosure of 1
Hashikawa might remedy this deficiency in the combined teachings of 2
Otsuka and Elgee for purposes of the rejection of claims 24, 27 and 30. (See 3
Ans. 11-12.) Neither does the Examiner persuasively explain how Zwettler 4
might remedy this deficiency in the combined teachings of Otsuka and Elgee 5
for purposes of the rejection of claims 25, 28 and 32 (See Ans. 12-13); or 6
how Shiau might remedy this deficiency in the combined teachings of 7
Otsuka and Elgee for purposes of the rejection of claim 36 (See Ans. 13-14). 8
We do not sustain the rejection of claims 24, 27 and 30 under § 103(a) as 9
being unpatentable over Otsuka, Elgee and Hashikawa; the rejection of 10
claims 25, 28 and 32 under § 103(a) as being unpatentable over Otsuka, 11
Elgee and Zwettler; or the rejection of claim 36 under § 103(a) as being 12
unpatentable over Otsuka, Elgee and Shiau. 13
14
Rejection of Claims 18, 20 and 21 as being Unpatentable over Claassen and 15
Elgee 16
Claim 18 recites a print media movement apparatus including a loop. 17
Claim 18 further recites that “an inner surface of the loop has a low 18
coefficient of friction to slide along the guide.” Claassen describes an in-19
line deserter 20 for arranging nested folded product 10 into a single stream. 20
(Claassen, col. 4, ll. 20-22 and 40-47.) A differential speed section 30 of 21
Claassen’s deserter 20 includes a pinch roller assembly 42. (Claassen, 22
col. 4, ll. 59-61.) The Examiner identifies the pinch roller assembly 42 as 23
corresponding to the loop recited in claim 18. (Ans. 14.) 24
The Appellants argue that neither Claassen nor Elgee describes a loop 25
that slides along a guide. (Br. 15.) More fundamentally, the Examiner fails 26
to identify any structure in Claassen corresponding to the guide. Claim 18 27
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positively recites the guide by relying on the guide to define the course of 1
travel followed by the loop. The closest that the Examiner comes to 2
identifying a structure in Claassen corresponding to the guide is to cite 3
Figure 2 of Claassen. (Ans. 14.) Furthermore, the Examiner fails to 4
articulate any reasoning with some rational underpinning sufficient to 5
explain why it would have been obvious to provide such a guide for the 6
pinch roller assembly 42 of Claassen. 7
The limitation “to slide along the guide” defines a structural (that is, 8
spatial) relationship between the loop and the guide. The limitation cannot 9
be dismissed as merely an intended use of the loop. Without either the 10
identification of a structure in Claassen’s apparatus corresponding to the 11
recited guide or reason why the provision of such a guide would have been 12
obvious, it cannot be said that it would have been obvious to provide the belt 13
of Claassen’s pinch roller assembly 42 with the capacity to slide over such a 14
guide. We do not sustain the rejection of claims 18, 20 and 21 under 15
§ 103(a) as being unpatentable over Claassen and Elgee. 16
17
DECISION 18
We REVERSE the Examiner’s decision rejecting claims 12-14, 18, 19
20, 21, 24-33, 35 and 36. 20
21
REVERSED 22
23
Klh 24