Ex Parte Kobayashi et al

Patent Trial and Appeal Board

Feb 27, 2017

12923103 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/923,103 09/02/2010 Misao Kobayashi SIG-060 2260
32628 7590 03/01/2017
KANFSAKA RFRNFR AND PARTNFRN FT P EXAMINER
2318 Mill Road ROYSTON, JOHN M
Suite 1400
ALEXANDRIA, VA 22314-2848 ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
office@uspatentagents.com
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MISAO KOBAYASHI, MASAKI OSHIMA, and
YUICHIICHINOSE
Appeal 2015-005760
Application 12/923,103
Technology Center 2800
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—20.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
July 28, 2014 (“Final Act.”); the Appeal Brief dated November 25, 2014
(“App. Br.”); the Examiner’s Answer to the Appeal Brief dated March 13,
2015 (“Ans.”); and the Appellants’ Reply Brief dated May 12, 2015 (“Reply
Br.”).
2 Appellants identify NISCA Corporation as the Real Party in Interest.
App. Br. 2.
Appeal 2015-005760
Application 12/923,103
The Claimed Invention
Appellants’ disclosure relates to a sheet folding apparatus for
performing folding processing on a sheet in a transporting direction from a
carry-in entrance toward a carrying-out exit. Amended Abstract; Spec. 1 8.
Claim 1, the sole independent claim, is illustrative of the claimed subject
matter and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 19) (key disputed claim language italicized):
1. A sheet folding apparatus for performing folding
processing on a sheet in a transporting direction from a carry-in
entrance toward a carrying-out exit, comprising:
a first transport path for guiding the sheet from the carry-
in entrance to the carrying-out exit without performing folding
processing;
a second transport path for performing folding processing
on the sheet from the carry-in entrance to the carrying-out exit;
a third transport path connected to the second transport
path for guiding the folded sheet towards the carrying-out exit
in which a transporting direction of the third transport path is in
a direction opposite to a transporting direction in the second
transport path; and
a folding processing device disposed in the second
transport path to fold the sheet from the carry-in entrance,
wherein the second transport path has a path end portion
above the first transport path for guiding a leading end of the
sheet to adjust a folding position of the sheet, a nip point
disposed below the first transport path where the sheet is nipped
by the folding processing device for folding, and a folded sheet
guide path upstream of the nip point for guiding the folded
sheet under the first transport path,
the first transport path is arranged between the path end
portion of the second transport path and the folding processing
device, and
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Appeal 2015-005760
Application 12/923,103
the second transport path is arranged between the carry-
in entrance to the carrying-out exit in the transporting direction.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Motooka
Hirano et al.,
(hereinafter “Hirano”)
Kaneko et al.,
(hereinafter “Kaneko”)
Sanmiya et al.,
(hereinafter “Sanmiya”)
US 5,165,671 Nov. 24, 1992
US 6,213,456 B1 Apr. 10,2001
US 7,207,557 B2 Apr. 24, 2007
US 2009/0035016 Al Feb. 5, 2009
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 8, 15, 16, and 20 are rejected under
35 U.S.C. § 102(b) as being anticipated by Kaneko. Ans. 2; Final Act. 2.
2. Claims 2—6 and 9-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaneko in view of Hirano. Ans. 2; Final Act. 7.
3. Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneko in view of Sanmiya. Ans. 2; Final Act. 12.
4. Claims 17—19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneko as applied to claim 16 above, and further in view
of Motooka. Ans. 2; Final Act. 13.
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Appeal 2015-005760
Application 12/923,103
OPINION
Rejection 1
The Examiner finds that Kaneko discloses all of the limitations of
claim 1 and concludes that the reference anticipates the claim. Final Act. 2—
5 (citing Kaneko, Figs. 2, 4A-4D).
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because Kaneko fails to disclose all of the “claimed features.”
App. Br. 13. In particular, Appellants argue that Kaneko does not disclose
the “wherein the second transport path has a path end portion above the first
transport path” limitation of claim 1. Id. at 9 (emphasis added).
We agree with Appellants’ argument. To serve as an anticipatory
reference, “the reference must disclose each and every element of the
claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Based on the record before us, we are not persuaded that the Examiner has
established by a preponderance of the evidence that Kaneko discloses the
“wherein the second transport path has a path end portion above the first
transport path” limitation of claim 1.
The Examiner does not adequately explain how or direct us to
sufficient evidence that Figure 2 of Kaneko discloses this limitation. As
Appellants correctly point out (App. Br. 9), the Examiner’s markup of
Kaneko’s Figure 2 (Final Act. 5) does not show or reflect the “path end
portion” of the second transport path being above the first transport path, as
required by the claim. Rather, the Examiner’s markup depicts the path end
portion of the second transport path as either overlapping or below the first
transport path. In particular, the Examiner’s markup appears to show both
the first transport path and the second path overlapping and ultimately
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Application 12/923,103
passing together through conveying rollers 22 and discharge rollers 23 to the
single-sheet processing carry-out unit 20, and then on to the main discharge
tray 24 (see Kaneko, Fig. 2, col. 11,11. 21—24).
The Examiner also does not identify any other portions of Kaneko’s
Specification for disclosing this limitation. Although Kaneko does disclose
a “conveying path p6” (Kaneko, Fig. 2, col. 30,11. 30-34), which, according
to Figure 2, is located above the first transport path, there is no teaching or
suggestion in the reference that the conveying path p6 corresponds to any
portion of the second transport path, as depicted by the Examiner. Notably,
the Examiner does not discuss conveying path p6 in the rejection or make
any findings in this regard relating path p6 to the path end portion of the
second transport path.
Moreover, we do not find the Examiner’s comments at pages 3 and 4
of the Answer persuasive because they are not supported by sufficient
evidence—whether in Kaneko or elsewhere in the record—and the
comments do not meaningfully address Appellants’ principal argument that
Kaneko does not disclose the path end portion of the second transport path
being above the first transport path.
The Examiner’s assertion that the “portion of the path just
downstream in the sheet conveyance direction of the indicated carry-in
entrance is considered an ‘end portion’” (Ans. 3) is not persuasive because it
is conclusory and, without more, insufficient to sustain the Examiner’s
findings in this regard. Cf In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(holding “rejections . . . cannot be sustained by mere conclusory
statements”).
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Appeal 2015-005760
Application 12/923,103
We, therefore, cannot sustain the Examiner’s determination that
Kaneko discloses all of claim 1 ’s limitations and anticipates the claim.
Accordingly, we reverse the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b) as being anticipated by Kaneko. Because claims 8, 15,
16, and 20 each depends from claim 1, we also reverse the Examiner’s
rejections of these claims.
Rejections 2, 3, and 4
Because the Examiner’s § 103 rejections are based on the Kaneko
reference, and the foregoing deficiencies in the Examiner’s analysis and
conclusion regarding Kaneko’s teachings are not remedied by the
Examiner’s findings regarding the additional references or combination of
references cited in support of the second, third, and fourth grounds of
rejection, we also reverse the Examiner’s Rejections 2, 3, and 4.
DECISION/ORDER
The Examiner’s rejections of claims 1—20 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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