Ex Parte IzumeDownload PDFPatent Trial and Appeal BoardMar 4, 201611887262 (P.T.A.B. Mar. 4, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111887,262 21874 7590 Locke Lord LLP P.O. BOX 55874 BOSTON, MA 02205 07/15/2009 03/08/2016 FIRST NAMED INVENTOR Masayuki Izume UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 1451551.105US9 3077 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 03/08/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASA YUKI IZUME Appeal2014-003902 Application 11/887 ,262 Technology Center 2800 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL .6. .... ,1 .... ,....,-TTr'1.r-"\ l\-1,....Al/'\.r'" , .. C- "1 • ,• Appeuant' appeals unaer j) u.~.L. s U4~aJ rrom me nna1 reJecuon of claims 1and3. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2 and 4 are canceled. See App. Br. 4. We affirm. STATEMENT OF THE CASE The Invention "[T]he present invention ... provide[s] a unit of a plurality of divided vibrating rollers that detects the abnormality in switching of the position of 1 According to Appellant, the real party in interest is I. Mar Planning Inc. App. Br. 3. Appeal2014-003902 Application 11/887 ,262 the vibrating roller to prevent the occurrence of abnormality caused therefrom, and a printing machine." Spec. i-f 7. Claim 1 is independent and illustrative of the subject matter on appeal: 1. A unit of a plurality of divided vibrating rollers compnsmg: a support member fixed to a frame of a printing machine; a plurality of movable members of short circular cylinder shape attached to the support member so as to individually reciprocate in the same direction; a vibrating roller rotatably attached to the outer periphery of each movable member; and a change-over device, arranged on the support member, for individually switching the position of each movable member; wherein with respect to each of all the movable members, a change-over detection sensor for detecting the switching of the position of the movable member is disposed at the portion of the support member slidably contacting the movable member, the change-over detection sensor is one magnetic sensor; and a permanent magnet is attached to the portion of the movable member facing the change-over detection sensor, wherein the movable member and the vibrating roller are switched by the change-over device to a first position where the vibrating roller moves away from a fountain roller and presses against a distributing roller as a first state and to a second position where the vibrating roller moves away from the distributing roller and presses against the fountain roller as a second state, the magnetic sensor is fixed in an embedded manner at a surface of the support member that slidably contacts a bottom wall of a bore of the movable member and the permanent magnet is fixed in an embedded manner at the bottom wall of the bore of the movable member facing thereto, 2 Appeal2014-003902 Application 11/887 ,262 when the movable member is switched to any one of the first position and the second positions, the magnetic sensor faces to the permanent magnet and when the movable member is switched to another one of the first position and the second positions, the magnetic sensor deviates from the permanent magnet, therefore, the output of the magnetic sensor changes depending on the position of the movable member, and whether the vibrating roller is at the first state or at the second state is recognized from the output of the magnetic sensor, and when switching of the position of the vibrating roller has not been properly performed, a warning is given and the operation is stopped. App. Br. 12. Rejection on Appeal Claims 1and3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Izume (US 6,422,144 Bl; issued July 23, 2002), Douillard et al. (US 6,615,726 B2; issued Sept. 9, 2003), and Tymkewicz et al. (US 4,538,515; issued Sept. 3, 1985). See Final Act. 2-5. ANALYSIS Change Over Detection Sensor Limitation Appellant contends Douillard does not teach or suggest claim 1 's "change-over detection sensor" because Douillard's lateral detection sensor is located external to--rather than embedded within-the vibration roller and detects motion in a direction perpendicular to that of the "change-over detection sensor." See App. Br. 9-10; Reply Br. 4--5. Appellant further contends the Examiner's proposed modification of Douillard' s lateral detection sensor to achieve claim 1 's "change-over detection sensor" and "permanent magnet" elements is unsupported and employs improper 3 Appeal2014-003902 Application 11/887 ,262 hindsight reconstruction by ( 1) using Appellant's application as a blueprint to cobble together an obviousness rejection and (2) focusing on the commonality between the solutions of Appellant and the prior art, rather than the problem faced by Appellant. Id. at 6, 8. We are unpersuaded of error. We agree with the Examiner that Douillard's magnetic sensor that detects a change in a roller's position would have suggested the "change-over detection sensor" and "permanent magnet," elements of claim 1. See Final Act. 3--4; Douillard col. 5, 11. 32- 37. In particular, we agree that it is well known to detect the relative positions of components of a printing machine using magnetic sensors such as Douillard' s, and that such sensors operate through the detection of proximity between a sensor and a magnet. See Final Act. 4. We also agree that, in light of Douillard' s teaching of detecting position with a magnetic sensor, applying a magnetic sensor to Izume's vibration roller would have been obvious to one skilled in the art, resulting in the magnetic sensor parts located as claimed so that magnets would come into and out of proximity as the change-over device is activated. See id. As the Examiner finds, because Izume's moving elements are located within its vibration roller, it would have been obvious to locate the magnetic sensor elements therein to detect the elements' relative positions. See Ans. 5; Final Act. 4; compare Izume Fig. 4, item 8, movable member, with Spec. Fig. 4, item 8, movable member. We find that one of ordinary skill in the art would understand to locate a movement-detecting magnetic sensor proximate to the site of the movement to be detected. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("Rigid preventative rules that deny factfinders recourse to common sense ... are neither necessary under our case law nor consistent with it."); Wyers 4 Appeal2014-003902 Application 11/887 ,262 v. Master Lock Co., 616 F.3d 1231, 1240 (Fed. Cir. 2010) ("In appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of 'common sense.'") (internal quotations omitted). Appellant's present no evidence to suggest that locating a magnetic sensor within the vibration roller would have been "uniquely challenging or difficult for one of ordinary skill in the art" or otherwise "represented an unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); Final Act. 4 (finding the particular claimed location of the magnetic sensor and permanent magnet does not provide any unexpected function of the apparatus). We are also unpersuaded by Appellant's contentions that the Examiner employed improper hindsight reconstruction with respect to Douillard because ( 1) the Examiner's findings and reasoning derive from the prior art and the knowledge of one skilled in the art, not Appellant's disclosure; and (2) the Examiner properly focused on the problem faced by Appellant (i.e., detecting an undesirable position of a vibrating roller using a magnetic sensor). See Final Act. 2-5; Ans. 2-5; contra App. Br. 6, 8; see also Ans. 3 (citing In re McLaughlin, 443F.2d1392, 1395(CCPA1971)). Warning Limitation Appellant contends the Examiner employed improper hindsight in rejecting "when switching the position of the vibrating roller has not been properly performed, a warning is given and the operation is stopped," as recited in claim 1. See App. Br. 7, 12 (emphasis added). Specifically, Appellant points to the similarity between the Examiner's motivation to 5 Appeal2014-003902 Application 11/887 ,262 combine, "to provide indications of rollers being out of position and prevent inaccurate printing and reduce waste of time and materials" (Final Act 4--5), and Appellant's Specification, which discloses "detect[ing] the abnormality in switching of the position of the vibrating roller to prevent the occurrence of abnormality caused therefrom" (Spec. i-f 7). See id. We are unpersuaded by Appellant's contention that the advantages of Tymkewicz cited by the Examiner evidence improper hindsight. See App. Br. 7. The Examiner finds Tymkewicz teaches or suggests the limitation at issue by evidencing the well-known concepts of providing indicators and stopping a process when an element of a system is out of position. See Final Act. 3-5; Tymkewicz col. 6, 11. 29-35. The Examiner further finds these well-known concepts are "known to be advantageous in printing systems ... in order to prevent inaccurate printing and reduce waste of time and materials." See Ans. 3--4; accord Tymkewicz col. 6, 11. 38--42 (generating status indicators to apprise the user of the status of the printing machine during operation). Because the advantages cited by the Examiner would have been within the knowledge of one of ordinary skill in the art at the time of Appellant's invention, we are unpersuaded by Appellant's contention that the Examiner relied on Appellant's disclosure and employed improper hindsight reconstruction. See KSR, 550 U.S. at 421; Wyers, 616 F.3d at 1240. Summary In summary, as the Examiner finds, Izume's vibrating rollers correspond to those of Appellant's claim 1, except for the "change-over detection sensor," "permanent magnet," and "warning" elements. See Final 6 Appeal2014-003902 Application 11/887 ,262 Act. 2; lzume col. 7, 1. 41---col. 8, 1. 65; Fig. 2; compare Appellant's Fig. 4, with Izume Fig. 4. The Examiner further finds and we agree that Douillard and Tymkewicz, given the knowledge of one of ordinary skill in the art, would have suggested those elements not taught by Izume. See Final Act. 3-5; Douillard col. 5, 11. 32-37; Tymkewicz col. 6, 11. 29-35. In light of the above, we conclude the Examiner, without the use of improper hindsight, provided adequate rationale to combine the teachings of Izume, Douillard, and Tymkewicz to suggest claim 1 as a whole. See Final Act. 3-5. For the foregoing reasons, we find no Examiner error. Accordingly, we sustain the rejection of independent claim 1, as well dependent claim 3, which was not argued separately with particularity beyond the arguments advanced for claim 1. See App. Br. 5-10; Reply Br. 4---6. DECISION The decision of the Examiner to reject claims 1 and 3 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)(l) (2013). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation