Ex Parte Jewell

Board of Patent Appeals and Interferences

Dec 11, 2008

10624779 (B.P.A.I. Dec. 11, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT W. JEWELL
____________________

Appeal 2008-1394
Application 10/624,779
Technology Center 3600
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Decided: December 11, 2008
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Before: WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 1
rejection of claims 1-6, 9-16, 19-23, 25 and 26. We have jurisdiction under 2
35 U.S.C § 6(b) (2002). We AFFIRM. 3
The Appellant seeks to show that the Examiner erred in rejecting 4
claims 1-5, 10, 12, 13, 19-23, 25 and 26 under 35 U.S.C. § 102(b) (2002) as 5
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being anticipated by Kajikawa (JP 56-113641 A, publ. Sep. 7, 1981);1 1
rejecting claims 10 and 11 under § 102(b) as being anticipated by Mandel 2
(US 4,877,234, issued Oct. 31, 1989); rejecting claims 6, 11 and 14 under 3
35 U.S.C. § 103(a) (2002) as being unpatentable over Kajikawa and Laure 4
(US 4,717,027, issued Jan. 5, 1988); rejecting claims 9 and 15 under 5
§ 103(a) as being unpatentable over Kajikawa and Hayashi (JP 59-245374, 6
publ. Jun. 12, 1986); and rejecting claim 16 under § 103(a) as being 7
unpatentable over Kajikawa and Harush (US 6,456,311 B1, issued Sep. 24, 8
2002).2 9
With respect to the rejection of claims 1-5, 10, 12, 13, 19-23, 25 and 10
26 under § 102(b), the Appellant contends that the Examiner erred in finding 11
that Kajikawa discloses parallel media carriers cause print media to rotate 12
towards and align against a registration wall. (E.g., App. Br. 14). The 13
Examiner finds that Kajikawa teaches transporting belts meeting these 14
limitations. (Ans. 13). 15
The Appellant has grouped claims 1-5, 10, 12, 13, 19-23, 25 and 26 16
for purposes of arguing the rejection of the claims as being anticipated by 17
Kajikawa. The Appellant has grouped these claims by alleging that the 18
Examiner committed essentially the same error in rejecting each of the 19
independent claims (See App. Br. 12-22) and by presenting no separate 20
arguments regarding anticipation of the dependent claims by Kajikawa. See 21

1 The record includes an English-language translation of Kajikawa. All
page references to Kajikawa will be to the translation.

2 Claims 17, 18 and 27-29 are withdrawn from consideration. Claims 7
and 8 are objected to as being dependent on the rejected base claim 6 but
would be allowable if rewritten in independent form.
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In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990)(en banc). Although the 1
language of independent claims 1, 10, 12 and 19 is not identical, the 2
Appellant incorporates the explanation of the argument addressed to the 3
anticipation of claim 1 into the arguments addressed to the anticipation of 4
each of claims 10, 12 and 19 by Kajikawa. We select claim 1 as being 5
representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 6
Taking into account the language of representative claim 1, one issue 7
raised in this appeal is: Has the Appellant shown that the Examiner erred in 8
finding that Kajikawa discloses a plurality of parallel media carriers, “each 9
of the plurality of media carriers being configured to move print media at a 10
speed based on a position of each of the plurality of media carriers relative 11
to the registration wall to cause the print media to rotate towards and align 12
against the registration wall?” 13
The record supports the following findings of fact (FF) by a 14
preponderance of the evidence: 15
1. Kajikawa discloses a paper registering and transporting device. 16
(Kajikawa 4-5). Kajikawa’s device includes a registering reference surface 17
in the form of a wall. (Kajikawa 6). Kajikawa’s device also includes a pair 18
of transporting belts parallel to each other and to the registering reference 19
surface. (Kajikawa 5 and Fig. 3). 20
2. The Appellant’s Specification describes a speed differential 21
between two belts causing a print media to rotate and move towards a 22
registration wall. (Spec. 5, ¶ 0020). “For example, the print media will 23
rotate until an edge or side of the print media substantially abuts against the 24
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registration wall 205 thereby causing the print media to substantially align 1
against the registration wall 205.” (Id.) 2
3. Kajikawa likewise discloses running a transport belt positioned 3
farther from the registering reference surface faster than a belt positioned 4
nearer to the surface. (Kajikawa 5-6 and Fig. 3). This speed differential 5
between Kajikawa’s two transporting belts tilts sheets of paper transported 6
by the belts toward the registering reference surface. (Kajikawa 7 and Fig. 7
3). Because of this, a sheet of paper taken from a paper sheet accumulating 8
section can be put against the registering reference surface immediately. 9
(Kajikawa 8). In other words, each of Kajikawa’s transporting belts is 10
configured to move the print media at a speeds based on its position (that is, 11
its distance) relative to the registration reference surface to cause the print 12
media to rotate towards the registration reference surface. 13
4. Kajikawa’s device includes a registering and feeding 14
mechanism mounted on the registering reference surface near the trailing 15
edge of one of the transporting belts. (Kajikawa 6 and Fig. 5). Kajikawa 16
teaches that the registration of the sheet of paper is finished within a short 17
distance because the sheet is registered by the registering and feeding 18
mechanism and the registering reference surface while the sheet is being 19
passed from the transporting belts to the registering and feeding mechanism. 20
(Kajikawa 8). 21
5. The speed differential between Kajikawa’s transporting belts 22
appears to cause print media such as sheets of paper to be put against the 23
registering reference surface in the same manner that the speed differential 24
between the Appellant’s belts causes print media to rotate toward and align 25
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against a registration wall. In other words, each of Kajikawa’s transporting 1
belts appears to be configured to align the print media against the registering 2
reference surface in the same manner that the Appellant’s belts are 3
configured to perform this function. The Examiner has a reasonable basis 4
for belief (see, e.g., Final Office Action, Oct. 20, 2005 at 11) that each of 5
Kajikawa’s transporting belts is configured to move the print media at a 6
speed so as to collectively cause the print media to align against the 7
registering reference surface, even if Kajikawa’s registering and feeding 8
mechanism actually aligns the sheets against the surface. 9
“To anticipate a claim, a prior art reference must disclose every 10
limitation of the claimed invention, either explicitly or inherently.” In re 11
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The Appellant does not 12
appear to contest that Kajikawa expressly discloses every limitation of claim 13
1 except that each of the plurality of media carriers is configured so as to 14
cause the print media to align against the registration wall. (See App. Br. 15
12-14 and Reply Br. 2-3). In other words, Kajikawa expressly discloses a 16
device substantially identical in structure to the claimed media registration 17
mechanism except that one characteristic of the configuration of the 18
transporting belts is not expressly disclosed. 19
Where a claimed device and a prior art device are substantially 20
identical, an examiner can require an applicant to prove that the prior art 21
device does not necessarily or inherently possess the characteristics of the 22
claimed device. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The 23
Examiner has a reasonable basis for belief that Kajikawa’s transporting belts 24
are each configured to move print media at a speed to cause the print media 25
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to align against the registration wall. (FF 5). The Examiner’s reasonable 1
belief shifts the burden to the Appellant to prove that at least one of the 2
transporting belts shown and described in Kajikawa is not necessarily 3
configured to cause the print media to align against the registering reference 4
surface. 5
The Appellant has not met this burden. Kajikawa’s disclosure that 6
one may finish the registration of print media within a short distance by 7
combining the registering and feeding mechanism with the transporting belts 8
(FF 4) does not imply that the transporting belts would be incapable of 9
causing the print media to align against the registering reference surface 10
themselves in the absence of the registering and feeding mechanism. The 11
evidence that Kajikawa’s transporting belts are configured to cause the print 12
media to align against the registering reference surface provided by (i) the 13
similarity in configuration between Kajikawa’s belts and the belts described 14
in the Appellant’s Specification (FF 5) and (ii) Kajikawa’s statement that the 15
belts tilts sheets of paper so as to put the sheets against the registering 16
reference surface immediately after the sheets are taken from the paper 17
accumulating section (FF 3) outweighs any tendency of Kajikawa’s 18
disclosure concerning the registering and feeding mechanism to prove the 19
opposite. 20
With respect to the rejection of claims 10 and 11 under § 102(b), the 21
Appellant contends that Mandel fails to disclose media carriers configured to 22
move a sheet of media in a direction substantially parallel to a fence. The 23
Appellant further contends that Mandel fails to disclose steering the sheet of 24
media towards the fence to cause an edge of the sheet of media to contact 25
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and align against the fence. The Appellant advances these same contentions 1
in opposition to the rejection of both claims 10 and claim 11 under § 102(b) 2
as being anticipated by Mandel. (App. Br. 22). We select claim 10 as 3
representative of claims 10 and 11 for purposes of this ground of rejection. 4
§ 41.37(c)(1)(vii). 5
The Examiner observes that the Appellant uses the word “comprising” 6
when defining which limitations are included in the media steering 7
mechanism of claim 10. Based on this usage, the Examiner concludes that 8
claim 10 is open-ended: That is, the Examiner concludes that the language 9
of claim 10 is broad enough to encompass media steering mechanisms 10
having structure other than the positively recited fence, plurality of media 11
carriers and drive mechanism which contributes to causing the edge of the 12
sheet of media to contact and align against the fence. (Ans. 22). The 13
Examiner finds that Mandel discloses a driven crowned roller and a driven 14
extension member configured to move a sheet of media in a direction 15
substantially parallel to a registration wall or fence. (Ans. 20-21). The 16
Examiner further finds that Mandel discloses a scuffer roller which 17
cooperates with the crowned roller and the extension member to cause the 18
edge of the sheet of media to contact and align against the fence. (Ans. 22-19
23). 20
Taking into account the language of claim 10, two more issues raised 21
in this appeal are: Has the Appellant shown that the Examiner erred in 22
finding that Mandel discloses “a plurality of media carriers, each of the 23
media carriers configured to move the sheet of media in a direction 24
substantially parallel to the fence?” Has the Appellant shown that the 25
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Examiner erred in finding that Mandel discloses “driving each of the media 1
carriers at different speeds . . . such that the sheet of media is steered 2
towards the fence to cause an edge of the sheet of media to contact and align 3
against the fence?” 4
The record supports the following additional findings of fact (FF) by a 5
preponderance of the evidence: 6
6. Mandel discloses a sheet turning and registration apparatus. 7
(Mandel, col. 2, ll. 31-33). Mandel’s apparatus includes two pairs of 8
crowned roll nip rollers. (Id.) One pair of nip rollers includes a driven 9
crowned roller and an idler roll. (Mandel, col. 2, ll. 52-56). The other pair 10
of nip rollers includes a driven extension member having a crowned end 11
portion and an idler roll. (Id.) Mandel’s apparatus also includes a 12
registration edge or wall. (Mandel, col. 3, ll. 3-6). 13
7. Mandel’s apparatus is adapted to either (i) turn and then register 14
sheets or (ii) pass and just register sheets. (Mandel, col. 2, ll. 56-57). For 15
example, the driven crowned roller and the driven extension member are 16
configured to revolve at the same speed to move a sheet of media in a 17
direction substantially parallel to the fence. (See Mandel, col. 3, ll. 21-22; 18
col. 3, ll. 9-12 (describing that the driven crowned roller and the driven 19
extension member revolve at the same speed when the extension member is 20
engaged) and Fig. 1). Even when turning and then registering sheets, the 21
driven crowned roller and extension member are configured to transport 22
each of the sheets for a short distance substantially parallel to the fence 23
before and after the sheet is turned. (See Mandel, col. 2, l. 37 and col. 2, l. 24
60 – col. 3, l. 1). 25
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8. Mandel’s apparatus includes drive mechanism including a drive 1
input or motor and a clutch/brake mechanism. (Mandel, col. 2, l. 60 – col. 3, 2
l. 1 and Fig. 2). When turning and then registering a sheet, Mandel’s 3
clutch/brake mechanism brakes the extension member. The speed 4
differential between the driven crowned roller and the braked extension 5
member is such that the sheet of media is steered towards the fence. (Id.; 6
Mandel, Fig. 3). Mandel discloses that there is an inherent variation in the 7
90° turn performed in the nip rollers due to variations in roller speed and 8
clutch actuation time. Because of this variation, the apparatus must register 9
the sheet. (Mandel, col. 2, ll. 47-51). The steering of the sheet by the nip 10
rollers towards the fence causes an edge of the sheet of media to contact and 11
align against the fence by conducting the sheet into a skewed scuffer roller 12
which directs the edge of the sheet into alignment against the fence. 13
(Mandel, col. 3, ll. 12-20). 14
As noted earlier, a prior art reference anticipates a claim if the 15
reference discloses every limitation of the claimed invention, either 16
explicitly or inherently. Schreiber, 128 F.3d at 1477. A claim under 17
examination is given its broadest reasonable interpretation consistent with 18
the underlying specification when determining whether the subject matter of 19
the claim is either anticipated or obvious. In re American Acad. of Science 20
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Limitations not explicit or 21
inherent in the language of a claim cannot be imported from the 22
specification. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 23
Cir. 2003). 24
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Mandel discloses a sheet turning and registration apparatus including 1
a driven crowned roller and a driven extension member having a crowned 2
end portion, each of which is configured to move a sheet of media in a 3
direction substantially parallel to the fence. (FF 6 and 7). In particular, 4
claim 10 does not require each of the media carriers to be configured as 5
disclosed in the Specification to move a sheet of media in a direction 6
substantially parallel to a fence while the paper is steered towards the fence. 7
Mandel’s crowned roller and extension member are each configured to move 8
a sheet of media in a direction substantially parallel to the fence before, after 9
and in lieu of turning the sheet to a right angle relative to the fence. (FF 7). 10
The Appellant recites in claim 10 that a drive mechanism drives each 11
of the media carriers at different speeds “such that the sheet of media is 12
steered towards the fence to cause an edge of the sheet of media to contact 13
and align against the fence.” The proximity of the infinitive “to cause” to 14
the verb “steered” implies that the infinitive modifies the verb. In other 15
words, the quoted clause is broad enough to encompass media steering 16
mechanisms in which the steering of the sheet of media causes the edge of 17
the sheet to contact and align against the fence. The word “cause” in its 18
ordinary usage is broad enough to encompass indirect as well as direct 19
causation. 20
Mandel further discloses a drive mechanism for driving each of the 21
media carriers at different speeds such that the sheet of media is steered 22
toward the fence. (FF 8). The drive mechanism brakes the extension 23
member, creating a speed differential between the driven crowned roller and 24
the braked extension member. This speed differential is such that the sheet 25
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rotates and the leading edge of the sheet is steered towards the fence. The 1
speed differential between the driven crowned roller and the braked 2
extension member directly causes the leading edge of the sheet to engage the 3
scuffer roller and the engagement of the sheet with the scuffer roller directly 4
causes the sheet to contact and align with the fence. (Id.) Although the 5
steering of the sheet towards the fence indirectly causes the edge of the sheet 6
to contact and align against the wall through the mediation of the scuffer 7
roller, the steering of the sheet towards the fence nonetheless causes ”an 8
edge of the sheet of media to contact and align against the fence.” 9
The foregoing analyses imply the following conclusions: 10
The Appellant has not shown that the Examiner erred in finding that 11
Kajikawa discloses a plurality of parallel media carriers, “each of the 12
plurality of media carriers being configured to move the print media at a 13
speed based on a position of each of the plurality of media carriers relative 14
to the registration wall to cause the print media to rotate towards and align 15
against the registration wall.” The Appellant has not shown on the record 16
before us that the Examiner erred in rejecting grouped claims 1-5, 10, 12, 13, 17
19-23, 25 and 26 under § 102(b) as being anticipated by Kajikawa. 18
The Appellant has not shown that the Examiner erred in finding that 19
Mandel discloses a plurality of media carriers, “each configured to move the 20
sheet of media in a direction substantially parallel to the fence.” In addition, 21
the Appellant has not shown that the Examiner erred in finding that Mandel 22
discloses “driving each of the media carriers at different speeds . . . such that 23
the sheet of media is steered towards the fence to cause an edge of the sheet 24
to contact and align against the fence.” The Appellant has not shown on the 25
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record before us that the Examiner erred in rejecting claims 10 and 11 under 1
§ 102(b) as begin anticipated by Mandel. 2
The Appellant’s sole contention regarding the rejections of claims 6, 3
9, 11 and 14-16 under § 103(a) is that Kajikawa fails to disclose or suggest 4
parallel media carriers configured to cause print media to align against a 5
registration wall; and that each of the secondary references Laure, Hayashi 6
and Harush likewise fails to teach this limitation. (App. Br. 24-26). 7
Kajikawa does disclose this limitation as already discussed. Therefore, the 8
Appellant has not shown that the Examiner erred in rejecting claims 6, 9, 11 9
and 14-16 under § 103(a). 10
11
DECISION 12
We AFFIRM the rejections of claims 1-6, 9-16, 19-23, 25 and 26. 13
No time period for taking any subsequent action in connection with 14
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15
§ 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED 18
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HEWLETT PACKARD COMPANY 23
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INTELLECTUAL PROPERTY ADMINISTRATION 25
FORT COLLINS, CO 80527-2400 26