Ex parte Fujiwara

Board of Patent Appeals and Interferences

Aug 30, 1999

08630332 (B.P.A.I. Aug. 30, 1999)

Application for patent filed April 10, 1996.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TATSUO FUJIWARA

_____________
Appeal No. 1999-1488
Application 08/630,3321
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 1999-1488
Application 08/630,332
A copy of a translation of this reference, prepared for2
the Patent and Trademark Office, is forwarded to appellant
herewith. All references in this decision to pages and lines
of Okamoto are to pages and lines of this translation.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 8. Claims 9, 10 and 12, the other claims remaining in
the application, have been allowed.
The appealed claims are drawn to a medium conveying
apparatus, and are reproduced as Exhibit A of appellant's
brief.
The references applied in the final rejection are:
Suzuki et al. (Suzuki) 4,009,957 Mar. 1, 1977
Yamamoto et al. (Yamamoto) 5,067,835 Nov. 26, 1991
Lang 5,157,448 Oct. 20, 1992
Okamoto et al. (Okamoto) 5-92825 Apr. 16,
19932
(Japanese Application)
The claims on appeal stand finally rejected under
Appeal No. 1999-1488
Application 08/630,332
3
35 U.S.C. § 103 as unpatentable over the following combina-
tions of references:
(1) Claims 1 to 3, Lang in view of Yamamoto and Suzuki;
(2) Claims 4 to 7, Lang in view of Yamamoto, Suzuki and
Okamoto;
(3) Claim 8, Okamoto in view of Suzuki.
Rejection (1)
The basis of this rejection is stated on pages 2 and
3 of the final rejection, and need not be repeated here.
Appellant argues (brief, pages 15 to 16) that Lang's drawer 12
is the hopper, rather than a hopper "of a drawer type having a
drawer" as recited in claim 1, but we perceive no difference
between Lang's drawer 12 and the claimed hopper, since if
drawer 12 is a hopper, it certainly is a hopper "of a drawer
type having a drawer." Appellant also argues that Suzuki's
collecting tray 63 "is not of a drawer type" (brief, page 18);
this argument is not well taken because tray 63 fits into an
Appeal No. 1999-1488
Application 08/630,332
4
aperture in the machine and in effect constitutes a drawer.
Also, whether the tray (stacker) 63 of Suzuki is a drawer type
is moot as far as claim 1 is concerned, since claim 1 only
requires that one of the hopper and stacker be "of a drawer
type having a drawer."
Nevertheless, we will not sustain rejection (1)
because we do not consider that it would have been obvious to
one of ordinary skill in the art, in view of Yamamoto, to
provide the apparatus of Lang with a sensor means as recited
in claim 1. In the first place, the thrust of Lang's
disclosure is to simplify the prior known automatic drawer
lock controls by using the
preexisting signals to the feeder to actuate the lock (col. 1,
lines 15 to 21 and 54 to 59; col. 4, line 62, to col. 5, line
7). Adding sensors to the Lang apparatus to control the
drawer lock would be contrary to Lang's teachings, in that it
would require the use of extra wiring and other hardware,
which is what Lang seeks to avoid.
Appeal No. 1999-1488
Application 08/630,332
5
Moreover, the sheet sensors 26 of Yamamoto are used
to activate the drive rollers 23 to the printer 30 when a
sheet P is detected (col. 4, lines 48 to 64). The examiner
contends on page 4 of the answer that this disclosure would
have made it obvious to place a sheet sensor downstream of
Lang's feed roller 24 to control drawer lock 18, but we do not
agree, because in Yamamoto the sensors 26 control a device
(rollers 23) downstream, rather than upstream, from them.
Also, in the examiner's proposed modification of Lang, the
sensor would control a device (lock 18) upstream from the
sensor; such a modification of Lang would not have been
obvious because in Lang's device the tray (drawer) is intended
to be locked when the feeder 24 starts, not thereafter, as it
would be if sensors were placed after the feeder.
Rejection (2)
Appeal No. 1999-1488
Application 08/630,332
6
This rejection will likewise not be sustained
because, as applied by the examiner, the additional reference
(Okamoto) does not supply the deficiencies noted in rejection
(1), supra.
Rejection (3)
We agree with the examiner that it would have been obvious to
provide the copying machine of Okamoto with a stacker, this
being a conventional feature as shown by collection tray 63 of
Suzuki. However, we will not sustain this rejection because,
even assuming that the handhold 11 in the front of Okamoto's
hopper tray (cassette) 10 might be considered an "operator
panel" as recited in claim 8, we do not agree with the
examiner that it would have been obvious to one of ordinary
skill "to have the photo sensor 1 of Okamoto in the form of a
button" (final rejection, page 4). Although buttons and photo
sensors may be art recognized equivalents (id.), the purpose
of Okamoto's sensor is to prevent removal of the tray when
paper is feeding by automatically locking the tray when
someone reaches in with their hand 12 and breaks the light
beam (Fig. 3; pages 6 to 7). Since a button must be
Appeal No. 1999-1488
Application 08/630,332
7
deliberately pressed, rather than working automatically, it
would not have been obvious to substitute a
button for Okamoto's light sensor because the feature of
automatically preventing removal of the tray would be lost.
On page 7 of the answer, the examiner seems to assert that
door 14 (Fig. 4) may be considered a "button," but even if
this were the case, the requirement of claim 8 that the
operator panel, which has the button, be on a front surface of
the tray would still not be met, since Okamoto's "button" 14
is in a recess behind the front of the tray.
Rejections Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), we enter the
following new grounds of rejection:
(A) Claims 1 to 7 are rejected as unpatentable for failure to
comply with the second paragraph of 35 U.S.C. § 112, on the
following grounds:
(i) In claims 1 to 3 and 6, the term "said sensor" has no
antecedent basis.
Appeal No. 1999-1488
Application 08/630,332
8
(ii) Claim 2 is inconsistent with its parent claim 1. Claim 1
recites that the medium "is fed from said hopper into a feed
passage and is discharged into said stacker," thus indicating
that the "feed passage" is between, and not a part of, the
hopper and the stacker; it then recites that a sensor means is
"provided in said feed passage." Claim 2, on the other hand,
recites that "said sensor [sic: sensor means] is provided at
least on [sic: in] any one of said hopper and stacker." This
recitation conflicts with claim 1, because in claim 1 the
sensor means is recited as being provided in the feed passage,
and the feed passage (as indicated in claim 1) is not in the
hopper or in the stacker. The scope of claim 2 therefore is
indefinite.
(iii) Claim 4 is indefinite in that, in its last three lines,
it recites that the controlling means controls the drive means
such that when the medium is located at the boundary of the
apparatus body and "any one of said hopper and stacker," the
locking portion "can" be engaged by said engaging portion. As
Appeal No. 1999-1488
Application 08/630,332
See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA3
1971).
Normally, a rejection under § 103 should not be based on4
assumptions as to the scope of claims, but rather the claims
should be rejected under § 112, second paragraph. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Here, in the interest of administrative efficiency, we have
interpreted "said sensor" as --said sensor means-- in making
the present rejection of claim 1. Cf. Ex parte Saceman, 27
USPQ2d 1472 (Bd. Pat. App. & Int. 1993). However, in view of
the indefiniteness noted in rejections (A)(ii) and (iii),
supra, we have refrained from rejecting any of claims 2 to 6
under § 103, but would add that if rejections (A)(ii) and
(iii) are overcome, claims 2 to 6 might still be considered
unpatentable over Okamoto in view of Suzuki and/or other prior
art.
9
disclosed, when the medium is located at the boundary of the
hopper and the apparatus body, the controller drives the motor
to drive the locking portion (page 17, lines 5 to 18).
Therefore, reading this claim in light of the disclosure, the3
meaning of the term "can be engaged" is indefinite, since it
appears from the disclosure that the locking portion will be
engaged.
(B) Claims 1 and 7 are rejected under 35 U.S.C. § 103 as
unpatentable over Okamoto in view of Suzuki. In Fig. 6 4
et. seq., Okamoto discloses a copier having a tray 10, which
constitutes a hopper of the drawer type, the paper sheets
Appeal No. 1999-1488
Application 08/630,332
10
(medium) 22 in the tray being fed through passages 24, 25, by
roller 23. When the paper sheets contact sensor means
(feeler) 18a in the feed passage, the feeler 18 enters slit 17
in the tray, to prevent removal (opening) of the tray. As for
claim 7, indicator 35 lights to indicate the presence of paper
in the feed passage (page 11, last line, to page 12, line 7).
The only element recited in claim 1 which is not disclosed by
Okamoto is a stacker, but as discussed above in connection
with rejection (1), Suzuki discloses stacker 63 (collection
tray) in a copier, such being a well known feature which would
obviously have been provided in the copier of Okamoto.
Conclusion
The examiner's decision to reject claims 1 to 8 is
reversed. Claims 1 to 7 are rejected pursuant to 37 CFR
§ 1.196(b).
This decision contains new grounds 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),
Appeal No. 1999-1488
Application 08/630,332
11
1203 Off. Gaz. Pat. and Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides that "[a] new ground of
rejection shall not be considered final for purposes of
judicial review."
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
grounds of rejection to avoid termination of proceedings
(37 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. . . .
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED, 37 CFR § 1.196(b)
Appeal No. 1999-1488
Application 08/630,332
12
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
IAC:psb
Appeal No. 1999-1488
Application 08/630,332
13
Armstrong Westerman Hattori McLeland & Naughton
1725 K Street, N.W.
Suite 1000
Washington, D.C. 20006