Ex Parte Karn

Patent Trial and Appeal Board

Sep 6, 2016

11134989 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111134,989 0512312005
62095 7590 09/06/2016
FAY SHARPE I XEROX - ROCHESTER
1228 EUCLID A VENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Keith S. Karn
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.
20040070USNP/XER20896US01 2544
EXAMINER
MARINI, MATTHEW G
ART UNIT PAPER NUMBER
2854
MAILDATE DELIVERY MODE
09/06/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH S. KARN
Appeal2014-005407
Application 11/134,989
Technology Center 2800
Before TERRY J. OWENS, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4, 6-9, 12, 13, and 21-28. We have jurisdiction
under 35 U.S.C. § 6(b ).
The Invention
The Appellant claims a printing method. Claim 27 is illustrative:
27. A method for a printing system, wherein a print media
sheets needed count is compared to a print media sheets
available count, the method comprising:
Appeal2014-005407
Application 11/134,989
initiating a print job on an imaging machine through at
least one input device communicating with said imaging
machine;
printing output related to said print job from a first tray
included as one of multiple trays;
simultaneously calculating a combined total print media
sheets available number in the multiple trays;
simultaneously calculating a print media sheets needed
value to complete said print job, said sheets needed value is
based on at least a number of pages needed for producing the
output of the print job;
comparing said sheets available value with said sheets
needed value; and,
if said sheets needed value is greater than said sheets
available value, notifying a user through at least one output
device that said first tray needs replenishment.
Yamashita
The Reference
us 5,991,556
The Rejection
Nov. 23, 1999
Claims 1, 2, 4, 6-9, 12, 13, and 21-28 stand rejected under
35 U.S.C. § 102(b) over Yamashita.
OPINION
We reverse the rejection. We need address only the independent
claims, i.e., claims 1, 12, and 27. Those claims require, during an imaging
machine print job, simultaneously calculating the combined total print media
sheets available in multiple trays and the number of print media sheets
needed to complete the print job, and comparing the sheets available with
the sheets needed.
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Appeal2014-005407
Application 11/134,989
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Yamashita discloses an imaging machine comprising upper (25) and
lower (26) sensors which detect the size and amount of sheets in upper (8)
and lower (11) sheet feeding cassettes (col. 2, 11. 14--16; col. 5, 11. 31-33).
The upper sheet feeding cassette (8) cannot be supplied with sheets while
sheets are being fed from the lower sheet feeding cassette ( 11) because a
sheet transport path for the upper sheet feeding cassette (8) also serves as a
portion of a sheet transport path for the lower sheet feeding cassette ( 11)
(col. 2, 11. 23-26; col. 5, 11. 15-20). Thus, when the number of sheets in the
lower sheet feeding cassette (11) reaches an operator-specified
predetermined value (n) while sheets are being fed from that cassette, the
operator instructs the machine as to whether, when the lower sheet feeding
cassette (11) runs out of sheets, the machine is to supply sheets from the
upper sheet feeding cassette (8) while the operator resupplies the lower sheet
feeding cassette (11) or is to interrupt the print job while the operator
resupplies the upper sheet feeding cassette (8) (col. 2, 11. 31-37; col. 5,
11. 33-36, 54--58; col. 6, 11. 13-37). Supplying a predetermined number of
sheets to the upper sheet feeding cassette (8) before the start of a print job
can increase the number of sheets fed from the upper (8) and lower (11)
sheet feeding cassettes before the upper sheet feeding cassette (8) runs out of
sheets and, consequently, printing needs to be interrupted (col. 2, 11. 51-53;
col. 3, 1. 63---col. 4, 1. 14).
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Appeal2014-005407
Application 11/134,989
The Examiner asserts that Yamashita discloses "comparing (via the
ICU 22 at S5) said sheets available value with said sheets needed value (S9
for the lower tray 11 )"(Ans. 5).
Yamashita determines in S5 whether the upper cassette (8) contains at
least a predetermined number of sheets (col. 6, 11. 56-58; Fig. 4). "If less
than the predetermined number of sheets are stored in upper cassette 8 (NO
at SS), PCU 24 signals a request to resupply sheets to upper cassette 8 (S6)"
(col. 6, 11. 58---61 ). In S9 Yamashita detects the number of sheets remaining
in the lower sheet feeding cassette ( 11) to determine whether to switch to the
upper sheet feeding cassette (8) (col.7, 11. 2-12; Fig. 4). In S5 and S9 there
is no comparison of a sheets available value with a sheets needed value.
The Examiner asserts that Yamashita' s "decreasing sheet value is
constantly being used in the determination of whether to shift the feeding to
the upper cassette if the lower cassette runs out or drops below the
predetermined value (i.e. the current sheets needed value). Hence, as the
sheets needed value updates so does the comparison to the sheets available
value within the active cassette" (Ans. 13).
Yamashita' s lower sheet feeding cassette ( 11)' s predetermined value
is not the current sheets needed value but, rather, is the number of sheets at
which the operator is notified to instruct the machine as to whether, when
the lower sheet feeding cassette ( 11) runs out of sheets, to switch to the
upper sheet feeding cassette (8) or interrupt the print job (col. 6, 11. 13-37).
Hence, the Examiner has not established that Yamashita discloses,
expressly or inherently, each limitation of the Appellant's claims.
Accordingly, we reverse the rejection.
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Appeal2014-005407
Application 11/134,989
DECISION/ORDER
The rejection of claims 1, 2, 4, 6-9, 12, 13, and 21-28 under
35 U.S.C. § 102(b) over Yamashita is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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