Ex Parte Hough et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10707470 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES A. HOUGH and TESFAMICHIEL FESHAZION
____________

Appeal 2009-002932
Application 10/707,470
Technology Center 3700
____________

Decided1: July 22, 2009
____________

Before JAMESON LEE, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

MEDLEY, 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).

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A. STATEMENT OF THE CASE
Pitney Bowes Inc. (“Pitney Bowes”) the real party in interest, seeks
review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-15 and
17-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
References Relied on by the Examiner
Kalbow 4,055,029 Oct. 25, 1977
Gelardi et al. (“Gelardi”) 5,457,843 Oct. 17, 1995
Beeson 5,589,865 Dec. 31, 1996
Kikuchi et al. (“Kikuchi”) 6,353,233 Mar. 5, 2002

Rejections on Appeal
The Examiner rejected claims 1-3, 5, 7, 8, 10, 15 and 21 under 35
U.S.C. § 102(b) as anticipated by Beeson.
The Examiner rejected claim 4 as unpatentable under 35 U.S.C. §
103(a) over Beeson and Kikuchi.
The Examiner rejected claims 6, 9, 11-14, 17 and 20 as unpatentable
under 35 U.S.C. § 103(a) over Beeson.
The Examiner rejected claim 18 as unpatentable under 35 U.S.C. §
103(a) over Beeson and Gelardi.
The Examiner rejected claim 19 as unpatentable under 35 U.S.C. §
103(a) over Beeson and Kalbow.
Pitney Bowes argues separately several different groups of claims,
which shall become apparent in the analysis.
The Invention
Pitney Bowes discloses a cleaner for an optical sensor in a mailing
machine. The cleaner includes a substrate sheet with strips of open cell
foam adhered across the width of the sheet. The strips of open cell foam
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each have a height which is vertically compressed when passing through
paper feed path rollers. Spec. ¶¶ 0007, 0016-0018, 0021-0023, 0025.
Claim 1, reproduced from the Claim Appendix of the Appeal Brief,
reads as follows:
A cleaning apparatus for cleaning non-contact optical
sensors in a paper handling device comprising:
a substrate sheet for feeding through a feed path of the paper
handling device having a first surface and a second surface and
having a substrate thickness, wherein the first surface has a
front edge, a rear edge, a left edge and a right edge;
a first strip of material having a first strip height and
attached to the first surface of the substrate sheet and oriented
perpendicular to the feed path, wherein the first strip will
vertically compress when drawn through a roller nip and
partially vertically decompress when exiting the roller nip in
order to engage the optical sensors below the feed path;
a second strip of material having a first strip height and
attached to the first surface of the substrate sheet and oriented
perpendicular to the feed path, wherein the second strip will
vertically compress when drawn through a roller nip and
partially vertically decompress when exiting the roller nip in
order to engage the optical sensors below the feed path; and,
wherein,
the first strip is separated from the second strip in the
direction of the feed path by a first distance; and
the first strip height is relatively large compared to the
substrate thickness and the first strip height when partially
decompressed is sufficiently large to extend below the feed path
to engage the optical sensors.

B. ISSUES
1. Has Pitney Bowes shown that the Examiner incorrectly found that
Beeson describes (1) a first strip that will function to vertically
compress when drawn through a roller nip and partially vertically
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decompress when exiting a roller nip; (2) a first strip comprising
lint-free, lead-free, non-abrasive open cell foam; and (3) a handle?
2. Has Pitney Bowes shown that Beeson teaches away from (1) using
open cell foam for the second strip; (2) using a substrate with the
planar dimensions of a number 10 envelope; (3) a first strip height
approximately twelve times the substrate thickness; (4) a first strip
height of 0.75 inches; (5) a first strip width of 0.5 inches; (6) a first
distance of 2.5 inches; (7) a substrate of semi-rigid vinyl or ABS
material; (8) a strip having the shape of a triangular prism; (9) a strip
having the shape of a rectangular prism with at least one notch in the
top surface; and (10) a strip having the shape of a rectangular prism
having an angled portion of the leading edge removed?
3. Has Pitney Bowes shown that Kikuchi teaches away from putting
bristles through a roller?
C. FINDINGS OF FACT (“FF”)
Beeson
1. Beeson describes, referring to Beeson’s figure 4 reproduced below
[numbers from figure 4 inserted], a cleaning media [30] for cleaning
dried ink and contaminants on a printhead surface that includes a
solvent pad [34] and an absorbent pad [36] attached to a backing sheet
[32]. Col. 4, ll. 57-62.
Beeson’s figure 4 is below:
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Figure 4 depicts a cleaning media.
2. Each pad [34], [36] is compliant and has a thickness (i.e., height)
approximately twice the normal spacing distance between a printhead
and conventional media (i.e., printing paper) such as 1 mm. Col. 2, ll.
54-57; col. 5, ll. 39-44.
3. The solvent pad [34] is formed of a compliant material having low
abrasive characteristics, such as a tight-celled foam sponge. Col. 5, ll.
8-11.
4. The absorbent pad [36] is an antistatic pad having low abrasive
characteristics, such as lint-free felt. Col. 5, ll. 21-23.
5. Beeson describes that a solvent pad [34] and an absorbent pad [36] are
each 2 mm thick. Col. 5, ll. 43-44.
6. In use, the cleaning media [30] is fed into the printer and moves
through the printer along the media transport path. Col. 6, ll. 19-25.
7. The solvent pad [34] first encounters the printhead [10] and brushes
against the printhead [10] because the solvent pad thickness [34]
exceeds the separation distance between normal media and the
printhead [10]. Col. 6, ll. 26-33.
8. The absorbent pad [36] next encounters the printhead [10] and brushes
against the printhead [10] since the thickness of the absorbent pad
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[36] also exceeds the separation distance between normal media and
the printhead [10]. Col. 6, ll. 44-52.
9. Beeson depicts, referring to Beeson’s figure 7 reproduced below
[numbers from figure 7 inserted], the solvent pad [34] and absorbent
pad [36] are thicker than the separation distance between the backing
sheet [32] and the printhead [10] after passing beyond the printhead
[10] along the media transport path.
Beeson’s figure 7 is below:

Figure 7 depicts the cleaning media in the media transport path.
10. The backing sheet [32] is of standard paper size dimensions and
cardstock weight; but other dimensions may also be used. Col. 4, ll.
65-67.
11. Once the cleaning media [30] passes through the printer, the media
[30] is discarded or recycled. Col. 7, ll. 59-61.
Kikuchi
12. Kikuchi describes a cleaning sheet with a main sheet body having
brushes mounted thereon. Col. 2, l. 66-col. 3, l. 30.
13. The brushes are formed in the longitudinal direction of the main sheet
body which is fed longitudinally through a bill identification unit.
Col. 3, ll. 16-17; fig. 8.
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14. Kikuchi describes that the brushes clean contamination such as dust
attached to sensors. Col. 4, ll. 46-53.
Kalbow
15. Kalbow describes, referring to Kalbow’s figure 1 reproduced below
[numbers from figure 1 inserted], an open-cell foam plastic sponge
pad [10] with a plurality of parallel grooves [12], [13] formed in the
surface of the pad [10]. Col. 3, ll. 39-49.
Kalbow’s figure 1 is below:

Figure 1 depicts a sponge with a grooved surface.
16. Rectangular or square boss-like protuberances [14] are formed by the
grooves [12], [13] in the working or scrubbing surface of foam plastic
pad [10]. Col. 3, ll. 50-53.
17. The peripheral edge surfaces of the bosses are disposed at right angles
to the upper or peripheral edges giving the bosses sharp contour or
peripheral edges which are instrumental in increasing the efficiency of
the bosses during cleaning, scouring or polishing. Col. 1, ll. 47-54.
D. PRINCIPLES OF LAW
“[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior art, does not
cause a claim drawn to those things to distinguish over the prior art.” In re
Swinehart, 439 F.2d 210, 212-213 (CCPA 1971). When the structural
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limitations are all found in the prior art, the absence of a disclosure in the
prior art relating to function does not defeat the finding of anticipation. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (...“Schreiber’s contention
that his structure will be used to dispense popcorn does not have patentable
weight if the structure is already known, regardless of whether it has ever
been used in any way in connection with popcorn.”).
“A [prior art] reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). The use of patents as references is
not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned, as they are part of the literature
and a relevant for all they contain. In re Heck, 699 F.2d 1331, 1333 (Fed.
Cir. 1983), citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968).
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). But,
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citation omitted).
The Supreme Court has rejected the rigid application of the “teaching,
suggestion, or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). Based on its precedent, the Court reaffirmed the
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principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416.
“Under the proper legal standard, a reference will teach away
when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant's invention.”
Syntex (U.S.A) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005),
citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
E. ANALYSIS
Anticipation of Claims 1-3, 8, 10, 15 and 21 by Beeson
Independent claim 1 is representative and recites (disputed limitations
in italics): “a substrate sheet . . . a first strip of material having a first strip
height and attached to the first surface of the substrate sheet and oriented
perpendicular to the feed path, wherein the first strip will vertically
compress when drawn through a roller nip and partially vertically
decompress when exiting the roller nip in order to engage the optical
sensors below the feed path . . . .” Claim App’x. 16.
The Examiner finds that Beeson describes the structure recited in
claim 1 including a substrate sheet [32] with first [36] and second [34] strips.
Final Rejection 2; Ans. 3. The Examiner finds that the first [36] and second
[34] strips of material will compress and decompress since they are
compliant and made of a foam sponge and absorbent felt respectively. Ans.
8-9. The Examiner finds that if Beeson’s substrate was used in the
environment as claimed (i.e., through a roller nip), it would be capable of
functioning in the manner intended by the claimed invention since Beeson
teaches all the structural elements of the claim. Ans. 9.
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Pitney Bowes argues that Beeson does not describe a roller nip or
vertical decompression beyond a nip for cleaning. Br. 8. Pitney Bowes
argues that “it would appeal (sic) that the much denser ‘tight-celled’ foam
taught by Beeson would not so decompress . . . .” Br. 8. Pitney Bowes also
argues that regarding Beeson’s second strip of lint-free felt “[i]t appears that
felt would not so decompress.” Br. 9. Pitney Bowes further argues that “a
felt pad as taught in Beeson [] might not even compress through a nip . . . .”
Br. 9.
Pitney Bowes’ arguments are unpersuasive. As explained by the
Examiner, the claim language does not positively recite a roller nip. Instead,
the claim defines a cleaning apparatus for use in a paper handling device
which includes a roller nip. The claim recitation “the first strip will
vertically compress when drawn through a roller nip and partially vertically
decompress when exiting the roller nip in order to engage the optical sensors
below the feed path” describes the function of the cleaning apparatus strip
when drawn through the paper handling device. When the structural
limitations are all found in the prior art, the absence of a disclosure in the
prior art relating to function does not defeat the finding of anticipation.
Pitney Bowes does not direct us to objective evidence to demonstrate
that Beeson’s strip of “tight-celled” foam sponge material and Beeson’s strip
of felt would not inherently be capable of compressing and decompressing.
Argument of counsel cannot take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). At the time of the invention,
one with ordinary skill would have recognized that Beeson’s tight-celled
foam sponge material designed to hold solvent and the lint free felt material
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designed to be absorbent are both capable of compressing and
decompressing. Moreover, Beeson describes that the pads [34], [36] are
compressed by the printhead [10] when the cleaning media [30] is run along
the media transport path of the printer since the thickness of the pads [34],
[36] exceeds the separation distance between the printhead [10] and
conventional media. Beeson, col. 6, ll. 26-33 and ll. 44-52. Beeson also
describes that the solvent pad [34] and absorbent pad [36] are thicker than
the separation distance between the backing sheet [32] and the printhead
[10] after passing beyond the printhead [10] along the media transport path.
Beeson, fig. 7.
Pitney Bowes also argues that if Beeson included roller nips, the
solvent on the strips would splash on the rollers and would not clean the
print head as described. Br. 8. Pitney Bowes’ arguments are unpersuasive.
“A [prior art] reference must be considered for everything it teaches by way
of technology and is not limited to the particular invention it is describing
and attempting to protect.” EWP. The use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned, as they are part of the literature
and a relevant for all they contain. Heck. The intended purpose of Beeson
need not be preserved.
For all these reasons, Pitney Bowes has not shown the Examiner erred
in finding claims 1-3, 8, 10, 15 and 21 anticipated by Beeson.
Anticipation of Claim 7 by Beeson
Claim 7 is dependent on claim 1 and further recites: “a leading edge
handle on the substrate sheet.” Claim App’x. 17.
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The Examiner finds that Beeson describes a substrate sheet with a
leading edge handle because the edge closest to opening [38] is considered
the handle since any portion that can be gripped by a user’s hand can be
considered a handle. Final Rejection 2; Ans. 3.
Pitney Bowes argues that Beeson does not teach or suggest a separate
handle. Br. 8. Pitney Bowes further argues that such limitation is not met
simply by the substrate since that interpretation would give no meaning to
the element. Br. 9.
Pitney Bowes’ arguments are not commensurate in scope with the
claim limitations. Claim 7 does not recite a separate handle nor recite any
structure for the handle. Also, Pitney Bowes has not directed us to an
explicit definition in its Specification demonstrating a special meaning for
the term handle. Here, the broadest reasonable meaning does not preclude
two claim elements from being met by one prior art element. Pitney Bowes’
own specification describes that its handle may be integral with the
substrate, i.e., that the handle is formed from one edge of the substrate.
Spec. ¶0018. The Examiner’s interpretation that a handle can be any portion
of Beeson’s substrate [32] that can be gripped by a user’s hand is reasonable,
consistent with Pitney Bowes’ Specification, and consistent with the
ordinary meaning of the term as it would be understood by one with ordinary
skill in the art.
For all these reasons Pitney Bowes has not shown the Examiner erred
in finding claim 7 anticipated by Beeson.
Obviousness of Claim 4 over Beeson and Kikuchi
Claim 4 is dependent on claim 1 and further recites: “the second strip
of material comprises open cell foam and brush bristles.” Claim App’x. 17.
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The Examiner finds that Beeson does not describe a second strip made
from open cell foam material comprising bristles. Final Rejection 3-4;
Ans. 4. The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to make the
second strip from an open-cell foam, since it has been held within the
general skill of a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious engineering choice.
Final Rejection 4; Ans. 4; citing In re Leshin. The Examiner also
determined that it would have been obvious to modify the second strip of
Beeson by using open-cell foam since it is an obvious modification well
known in the art to duplicate parts for a multiple effect. Final Rejection 4;
Ans. 4; citing In re Harza. The Examiner further finds that modifying
Beeson so that both strips are of open-cell foam would only enhance the
cleaning capabilities of Beeson's invention. Final Rejection 4; Ans. 4. The
Examiner also finds that Kikuchi teaches a cleaning sheet comprising
bristles. Final Rejection 4; Ans. 4. The Examiner reasoned that it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to modify the second strip to include bristles as taught by Kikuchi
so that the bristles will aid in cleaning contaminants such as dust attached to
the sensors. Final Rejection 4; Ans. 4.
Pitney Bowes argues that both Beeson and Kikuchi teach away from
the claimed invention. Br. 10. Pitney Bowes argues that Beeson teaches
away from using open cell foam for the second strip because it explicitly
teaches using two different pads. Br. 10. Pitney Bowes argues that Kikuchi
teaches away from putting bristles through a roller because it teaches bristles
parallel to the feed path and not perpendicular to the feed path. Br. 10.
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Pitney Bowes’ arguments are misplaced. Beeson’s teaching of using
two different pads does not suggest that using a strip of open cell foam
would be unlikely to produce the objective sought by Pitney Bowes’
invention. Kikuchi’s teaching of a strip with bristles that are mounted on a
substrate in a direction parallel to the feed path rather than perpendicular
also does not suggest that putting bristles on a strip would be unlikely to
produce the objective sought by Pitney Bowes. A teaching of something
different does not, by itself, constitute a teaching away.
Moreover, the modification of Beeson’s second strip [36] to comprise
an open cell foam and brush bristles amounts to no more than the
combination of familiar elements according to known methods which is
obvious when it does no more than yield predictable results. Pitney Bowes
does not direct us to objective evidence to demonstrate that modifying
Beeson’s second strip [36] to comprise an open cell foam and brush bristles
would yield an unpredictable result or would be beyond the skill level of one
with ordinary skill in the art.
Pitney Bowes also argues that Beeson is not suitable for its intended
purpose in a system having a feed path with roller nips since the solvent
would be pressed out in the nip. This argument is also unpersuasive. As
explained before, the intended purpose of Beeson need not be preserved.
For all these reasons Pitney Bowes has not shown the Examiner erred
in determining that claim 4 would have been obvious over Beeson and
Kikuchi.
Obviousness of Claims 6, 9, 13, 14, and 17 over Beeson
Claims 6, 9, 13, 14 and 17 are ultimately dependent on claim 1.
Claim App’x. 17-18. Claim 6 recites: “the substrate sheet has approximately
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the planar dimensions of a number 10 envelope.” Claim App’x. 17. Claims
9, 13, 14 and 17 recite various dimensions of the first and second strips of
the cleaning apparatus. Claim App’x. 17-18.
The Examiner finds that Beeson does not describe a substrate having
the planar dimensions of a number 10 envelope. Final Rejection 4; Ans. 5.
The Examiner finds that Beeson describes that the substrate can take on
various dimensions. Final Rejection 5; Ans. 5. The Examiner further finds
that Beeson does not describe that the first strip height is approximately
twelve times the substrate thickness (claim 9), that the first strip height is
0.75 inches (claim 17), the first strip has a width of 0.5 inches (claims 13,
14, 17) and that the first distance is 2.5 inches (claims 13, 17). Final
Rejection 5; Ans. 5. The Examiner determined that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify Beeson's device since the only difference between the prior art
and the claimed device is a recitation of relative dimensions. Final Rejection
4-5; Ans. 5. The Examiner further finds that a device having the claimed
relative dimensions would not perform differently than the prior art device.
Final Rejection 4-5; Ans. 5; citing MPEP 2144.04.
Pitney Bowes argues that Beeson teaches away from using a substrate
with the planar dimensions of a number 10 envelop because it teaches using
a page size device. Br. 11. Pitney Bowes further argues that Beeson teaches
away since it explicitly teaches each pad having a height only twice the
standard gap between the printer head and the substrate of only 1 mm and
explicitly states that the figures are exaggerated. Br. 11.
Pitney Bowes’ arguments are unpersuasive. Beeson’s teaching of
using a page size substrate does not suggest that using a substrate with the
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dimensions of a number 10 envelope would be unlikely to produce the
objective sought by Pitney Bowes’ invention. Beeson’s teaching of using
strips with heights only twice the standard gap between the printer head and
a substrate does not suggest that using a first strip with a height of
approximately twelve times the substrate thickness, a height of 0.75 inches,
a width of 0.5 inches with a first distance of 2.5 inches would be unlikely to
produce the objective sought by Pitney Bowes’ invention. Again, the
teaching of something different does not, by itself, constitute a teaching
away.
For all these reasons Pitney Bowes has not shown the Examiner erred
in determining that claim 6 would have been obvious over Beeson.
Obviousness of Claims 11 and 12 over Beeson
Claims 11-12 are dependent on claim 1. Claim App’x. 17-18. Claim
11 recites: “the substrate comprises a semi-rigid vinyl material.” Claim
App’x. 17. Claim 12 recites: “the substrate comprises an ABS material.”
Claim App’x. 18.
The Examiner finds that Beeson does not describe that the substrate
comprises a semi-rigid vinyl material or an ABS material. Final Rejection 5;
Ans. 6. The Examiner determined that it would have been obvious to one
with ordinary skill in the art at the time of the invention to form the substrate
from a semi-rigid vinyl material or an ABS material, since it has been held
within the general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use. Final Rejection 5; Ans. 6;
citing In re Leshin.
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Pitney Bowes argues that Beeson teaches away from using semi-rigid
vinyl material or ABS material since it describes using a cardstock weight
backing sheet that is a single use item. Br. 12.
Pitney Bowes’ arguments are misplaced. Beeson’s teaching of using
a disposable cardstock weight backing sheet does not suggest that using a
semi-rigid vinyl substrate or ABS substrate would be unlikely to produce the
objective sought by Pitney Bowes’ invention.
For all these reasons Pitney Bowes has not shown the Examiner erred
in determining that claims 11-12 would have been obvious over Beeson.
Obviousness of Claim 18 over Beeson and Gelardi
Claim 18 is dependent on claim 1 and further recites: “at least one of
the first and second strips has the shape of a triangular prism.” Claim
App’x. 18.
The Examiner finds that Beeson does not describe the first strip
having the shape of a triangular prism. Final Rejection 6; Ans. 6. The
Examiner finds that it is well known to use triangular prisms to clean
surfaces and finds that Gelardi teaches a cleaning sheet comprising
triangular prisms located on the top surface. Final Rejection 6; Ans. 6;
citing Gelardi’s figs. 1, 4, 5. The Examiner determined that it would have
been obvious at the time the invention was made to use a triangular prism
shape for Beeson’s cleaning strip as taught by Gelardi since it is well known
and provides a means for cleaning. Final Rejection 6; Ans. 6.
Pitney Bowes argues that Beeson teaches away from using a
triangular prism since Beeson describes a first strip for delivering a solvent
using a rectangular pad. Br. 12-13. Pitney Bowes argues that “[i]t seems
clear that one of skill in the art would not look to deliver a solvent using the
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lower top surface area of a triangular prism.” Br. 13. Pitney Bowes argues
that Beeson is not suitable for its intended purpose in a system having a
triangular prism pad. Br. 13.
Pitney Bowes’ arguments are unpersuasive. Beeson’s teaching of
using a rectangular pad for delivering solvent does not suggest that using a
triangular prism shaped pad would be unlikely to produce the objective
sought by Pitney Bowes’ invention.
Pitney Bowes also argues that Beeson is not suitable for its intended
purpose in a system having a triangular prism pad. Br. 13. Pitney Bowes
arguments are unpersuasive since, as already explained, the intended
purpose of a reference (e.g., Beeson) need not be preserved.
For all these reasons Pitney Bowes has not shown the Examiner erred
in determining that claim 18 would have been obvious over Beeson and
Gelardi.
Obviousness of Claim 20 over Beeson
Claim 20 is dependent on claim 1 and further recites: “the first strip
includes a leading edge and has the shape of a rectangular prism having an
angled portion of the leading edge removed.” Claim App’x. 18.
The Examiner finds that Beeson does not describe that the rectangular
first strip has a leading edge with an angled portion removed. Final
Rejection 7; Ans. 7. The Examiner determined that at the time the invention
was made, it would have been obvious to a person of ordinary skill in the art
to remove an angled portion of the leading edge because Applicant has not
disclosed that the angled edge provides an advantage, is used for a particular
purpose, or solves a stated problem. Final Rejection 7; Ans. 7. The
Examiner determined that it would have been obvious to one of ordinary
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skill in the art to modify Beeson to obtain the invention since it has been
held that the shape or configuration of a claimed invention is a matter of
choice, which a person of ordinary skill in the art would have found obvious
absent persuasive evidence that the particular configuration or shape of the
claimed strip was significant. Final Rejection 7; Ans. 7-8; citing In re
Dailey.
Pitney Bowes argues that Beeson teaches away from using a
triangular prism shape since Beeson describes a first strip for delivering a
solvent using a rectangular pad. Br. 14. Pitney Bowes argues that “it seems
clear that one of skill in the art would not look to deliver solvent using the
lower top surface area as claimed.” Br. 14. Pitney Bowes also argues that
Beeson is not suitable for its intended purpose in a system having a top
surface as claimed. Br. 14.
Pitney Bowes’ arguments are substantially the same at the arguments
presented for claim 18. Compare Br. 14 with Br. 12-13. For the same
reasons explained before regarding claim 18, Pitney Bowes’ arguments are
unpersuasive.
For all these reasons, Pitney Bowes has not shown the Examiner erred
in determining that claim 20 would have been obvious over Beeson.
Obviousness of Claim 19 over Beeson and Kalbow
Claim 19 is dependent on claim 1 and further recites: “the first strip
includes a top surface and has the shape of a rectangular prism having at
least one notch in the top surface.” Claim App’x. 18.
The Examiner finds that Beeson does not describe that the rectangular
first strip has a top surface with a notch. Final Rejection 6; Ans. 6. The
Examiner finds that Kalbow teaches an open-cell foam block comprising
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notches (i.e. grooves [12]) in the top surface. Final Rejection 6; Ans. 6-7.
The Examiner determined that it would have been obvious to one of skill in
the art at the time the invention was made to modify the top surface of the
first strip of Beeson with the notched top surface of Kalbow since the
notches would allow the apparatus to clean more effectively. Final
Rejection 6; Ans. 7.
Pitney Bowes argues that Beeson teaches away from the combination
since Kalbow’s apparatus would have grooves parallel to the feed path,
which would result in swaths of the printhead not being cleaned if used. Br.
13.
Pitney Bowes arguments are again misplaced. Beeson’s teaching of
using strips absent notches does not suggest that using a rectangular prism
shaped strip having at least one notch in the top surface would be unlikely to
produce the objective sought by Pitney Bowes’ invention.
Furthermore, Pitney Bowes does not present objective evidence to
demonstrate that the cleaning ability of Beeson’s device would be
compromised if the first strip is modified to include notches or grooves. To
the contrary, Kalbow teaches that the grooves or notches result in sharp
peripheral edges which increase the efficiency of the cleaning surfaces.
Kalbow, col. 1, ll. 47-54; col. 3, ll. 39-53; fig. 1.
Pitney Bowes also argues that Beeson is not suitable for its intended
purpose in a system having such a notched surface. Br. 13. As explained
before, the intended purpose of Beeson need not be preserved.
For all these reasons Pitney Bowes has not shown the Examiner erred
in determining that claim 19 would have been obvious over Beeson and
Kalbow.
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Anticipation of Claim 5 by Beeson
Claim 5 is ultimately dependent on claim 1 and further recites: “the
first strip of material comprises lint-free, lead-free, non-abrasive open cell
foam.” Claim App’x. 17.
Pitney Bowes argues that the Examiner has not demonstrated that
Beeson describes a strip of material comprising “lint-free, lead-free, non-
abrasive, open cell foam”. Br. 9. The Examiner does not direct us to, and
we can not find, where Beeson describes a strip of material that is lint-free,
lead-free, and open cell foam.
For this reason, the Examiner erred in finding claim 5 anticipated by
Beeson.
G. CONCLUSION
1. Pitney Bowes has not shown that the Examiner incorrectly found that
Beeson describes (1) a first strip that will function to vertically
compress when drawn through a roller nip and partially vertically
decompress when exiting a roller nip; and (2) a handle.
2. The Examiner incorrectly found that Beeson describes a first strip
comprising lint-free, lead-free, non-abrasive open cell foam.
3. Pitney Bowes has not shown that Beeson teaches away from (1) using
open cell foam for the second strip; (2) using a substrate with the
planar dimensions of a number 10 envelope; (3) a first strip height
approximately twelve times the substrate thickness; (4) a first strip
height of 0.75 inches; (5) a first strip width of 0.5 inches; (6) a first
distance of 2.5 inches; (7) a substrate of semi-rigid vinyl or ABS
material; (8) a strip having the shape of a triangular prism; (9) a strip
having the shape of a rectangular prism with at least one notch in the
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top surface; and (10) a strip having the shape of a rectangular prism
having an angled portion of the leading edge removed.
4. Pitney Bowes has not shown that Kikuchi teaches away from putting
bristles through a roller.
H. ORDER
The decision of the Examiner rejecting claims 1-3, 7, 8, 10, 15 and 21
under 35 U.S.C. § 102(b) as anticipated by Beeson is affirmed.
The decision of the Examiner rejecting claim 5 under 35 U.S.C. §
102(b) as anticipated by Beeson is reversed.
The decision of the Examiner rejecting claim 4 as unpatentable under
35 U.S.C. § 103(a) over Beeson and Kikuchi is affirmed.
The decision of the Examiner rejecting claims 6, 9, 11-14, 17 and 20
as unpatentable under 35 U.S.C. § 103(a) over Beeson is affirmed.
The decision of the Examiner rejecting claim 18 as unpatentable under
35 U.S.C. § 103(a) over Beeson and Gelardi is affirmed.
The decision of the Examiner rejecting 19 as unpatentable under 35
U.S.C. § 103(a) over Beeson and Kalbow is affirmed.
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-IN-PART

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MAT

Pitney Bowes, Inc.
35 Waterview Drive
PO Box 3000
MSC 26-22
Shelton CT 06484-3000