Ex parte LAMBERT et al.

Board of Patent Appeals and Interferences

Aug 31, 1998

08163635 (B.P.A.I. Aug. 31, 1998)

Application for patent filed December 9, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS P. LAMBERT,
and GREGORY A. LUDGATE
_____________
Appeal No. 96-0356
Application 08/163,6351
______________
ON BRIEF
_______________
Before COHEN, McQUADE and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3-5, 7-9 and 11. Claims 2, 6, 10 and 14
have been canceled. Claims 12, 13, 15 and 16 are allowed.
Appellants’ claimed subject matter is an apparatus for moving a
sheet. Claim 1 is exemplary of the subject matter on appeal and
recites:
Appeal No. 96-0356
Application 08/163,635
Translation attached.2
2
1. An apparatus for moving a sheet, including:
a first roller;
a second roller; and
means for rotating said first roller in a first direction,
said rotating means being adapted to rotate said second roller
simultaneously with said first roller and being adapted to enable
said second roller to idle simultaneously with said first roller
rotating in the first direction, said rotating means rotating
said second roller in the first direction and in a second
direction opposed to the first direction.
THE REFERENCES
The following references were relied on by the examiner:
Sato et al. (Sato) 4,105,199 Aug. 8, 1978
Tonomura et al. (Tonomura) 59-97957 June 6, 19842
(Japan)
THE REJECTIONS
Claims 3-5, 7, 8 and 11 stand rejected under 35 U.S.C.
§ 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellants regard as the invention.
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Sato.
Claims 1, 3, 9 and 11 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Yoshinobu.
Appeal No. 96-0356
Application 08/163,635
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Rather than reiterate the entire arguments of the appellants
and the examiner in support of their respective positions,
reference is made to the appellants’ brief (Paper No. 12) and to
the examiner’s answer (Paper No. 13) for the full exposition
thereof.
OPINION
In reaching our conclusions on the issues raised in this
appeal, we have carefully considered appellants’ specification
and claims, the applied references, and the respective viewpoints
advanced by the appellants and the examiner. These
considerations lead us to make the determinations which follow.
As a preliminary matter we base our understanding of the
appealed subject matter upon the following interpretation of the
terminology employed in the claims. In claim 1, we understand
the “first roller” as readable on the disclosed roller 96 and the
“second roller” as readable on the disclosed roller 114. In
keeping with this interpretation, we observe that roller 96
rotates in a first direction 126 and roller 114 rotates in the
first direction 162 (See Figure 2) and a second direction 166
(See Figure 4). We interpret the rotating means to include
roller 96 and gears 122, 124, 128, 129, 130, 136, 140 and 158.
As such, when gear 158 engages gear 138 the second roller 114
Appeal No. 96-0356
Application 08/163,635
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rotates in a first direction as depicted in Figure 2 and when
gear 158 engages gear 140, the second roller 114 rotates in a
second direction depicted in Figure 4. Figure 3 depicts a
position wherein neither gear 138 nor gear 140 engage gear 158 so
that roller 114 is idle.
In regard to the recitations in claim 3, gears 122, 128, 129
and 136 are interpreted to be the first drive means. Gears 130
and 140 are interpreted to be the second drive means and gear 158
is the third drive means.
We turn first to the examiner’s rejection under 35 U.S.C.
§ 112. The examiner is of the opinion that the recitation in
claims 3, 4 and 11 of a second drive means “for rotation in the
second direction” is indefinite as it is unclear what element is
to be rotated in the second direction. It is also the examiner’s
position that claim 3 is indefinite because it depends from a
canceled claim.
We initially note that the purpose of the requirements
stated in the second paragraph of 35 U.S.C. § 112 is to provide
those who would endeavor, in future enterprise, to approach the
area circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
Appeal No. 96-0356
Application 08/163,635
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involved and evaluate the possibility of infringement and
dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204 208
(CCPA 1970). The inquiry as stated in In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971) is:
. . . whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree
of precision and particularly . . . . [t]he
definiteness of the language employed must be analyzed-
not in a vacuum, but always in light of the teachings
of the prior art and of the particular application
disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.
When the language “for rotation in the second direction” is
analyzed in light of the disclosure, it clearly sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity. As such, gears 130 and 140 of the
second drive means both rotate in a direction opposite to the
direction the first drive means rotates the first roller 96.
This is clear from a reading of the specification at pages 12-13
and Figures 2-4.
As to the examiner’s statement that claim 3 is indefinite
because it depends on a canceled claim, we agree. We note that
appellants has made no argument regarding this portion of the 35
U.S.C. § 112 rejection. As such we are constrained to affirm the
rejection as it is directed to claim 3. However, we will not
Appeal No. 96-0356
Application 08/163,635
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sustain this rejection as it is directed to claims 4, 5, 7, 8
and 11.
We turn next to the examiner’s rejection of claims 1 and 3
under 35 U.S.C. § 102(b) as anticipated by Sato.
We initially note that it is not our practice to review
prior art rejections of claims found to be indefinite under 35
U.S.C. § 112, second paragraph when such rejections are based on
speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims. See In re Steele, 305
F.2d 859, 863, 134 USPQ 292, 295 (CCPA 1962). However, in this
case, we are reasonably certain that claim 3 should depend from
claim 1 instead of canceled claim 2 and as such we will address
the prior art rejections on the basis of this assumption in the
interest of judicial economy and to avoid piecemeal review.
In the examiner’s opinion, Sato discloses:
first roller 23; second roller (pulley for belt 24, or,
note lines 17-24 of col. 4); rotating means 36, 41-43,
46, 47, 39. Note idle position at col. 4, lines 10-16.
[Paper No. 3, page 5]
Appellants argue that Sato:
does not teach that the rotating means rotates the
second roller simultaneously with the first roller and
also enables the second roller to idle simultaneously
with the first roller rotating in the first direction
... Furthermore, there is no teaching that the
Appeal No. 96-0356
Application 08/163,635
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rotating means rotates the second roller in the first
direction and in the second direction opposite to the
first direction. [Brief at page 9]
We disagree with appellants. Sato discloses and depicts in
Figure 4 a main feed roller 23 (first roller) that rotates in a
first direction indicated by P. Each of the rollers which form
the pulley can alternately rotate in a direction QN (first
direction) which is in the direction of P and in the direction Q
(second direction) which is opposite to the P direction. Sato
also discloses that belts 24 are set free thereby idling the
rollers of the pulley from being driven during a shift of the
sleeve 43 from engagement with one of the first and second
pulleys 41 and 42 to engagement with the other and that a sheet
of paper may be fed at this time from between the leftmost and
rightmost positions of Figure 2. (Col. 4, lines 10-15). In view
of the foregoing, we will sustain the examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b). We will also sustain this
rejection as it is directed to claim 3 as this claim stands or
falls with claim 1 (Brief at page 7).
We turn next to the examiner’s rejection of claims 1, 3, 9,
and 11 under 35 U.S.C. § 102(b) as being anticipated by
Yoshinobu. The examiner states:
JP ‘957, discloses: first - fifth rollers corresponding
Appeal No. 96-0356
Application 08/163,635
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to the rollers on shafts 25, 71, 31, 29, 72
respectively; rotating means. (fig. 2). Note that
during pivoting of frame 28, neither gear 21 nor 27 is
in contact [with] gear 22 of the second roller. Thus,
the second roller is in an idle state during this
period. [Paper No. 5, page 3].
Appellants states that Yoshinobu:
. . . does not teach that the rotating means rotates
the second roller simultaneously with the first roller
and is adapted to enable the second roller to idle
simultaneously with the first roller rotating in the
first direction. Moreover, there is no teaching of the
rotating means rotating the second roller in the first
direction and in the second direction opposite to the
first direction. [Brief at page 10].
We do not agree with appellants. Yoshinobu discloses and depicts
in Figures 2 and 3 a roller (first roller) on shaft 25 and a
roller 5 (second roller) which rotates simultaneously with the
roller on shaft 25. Roller 5 rotates in the same direction as
the roller on shaft 25 when the drive mechanism is in the
position depicted in Figure 2. In addition, the examiner found
that roller 5 is idled at least momentarily when the drive
switching mechanism moves from the position depicted in Figure 2
to the position depicted in Figure 3. The roller 5 rotates in
the opposite direction (second direction) to the direction of the
rotation of the roller disposed of shaft 25 when the drive
switching mechanism is in the position depicted in Figure 3.
Appellants’ argument does not rebut the examiner’s finding
Appeal No. 96-0356
Application 08/163,635
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that roller 5 is idled when the drive mechanism moves between the
position depicted in Figures 2 and 3. Thus, this finding of the
examiner stands. Accordingly, in our view, Yoshinobu anticipates
the claimed subject matter of claim 1.
In view of the foregoing, we will sustain the examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Yoshinobu. We will also sustain this rejection as it is directed
to claims 3, 9 and 11 as the appellants indicate that all the
claims stand or fall together (Brief at page 7).
In Summary:
The examiner’s rejection of claims 4-5, 7, 8 and 11 under 35
U.S.C. § 112, second paragraph is not sustained.
The examiner’s rejection of claim 3 under 35 U.S.C. § 112,
second paragraph is sustained.
The examiner’s rejection of claims 1 and 3 under 35 U.S.C.
§ 102(b) as anticipated by Sato is sustained. The examiner’s
rejection of claims 1, 3, 9 and 11 under 35 U.S.C.§ 102(b) as
being anticipated by Yoshinobu is sustained.
No time period for taking any subsequent action in
Appeal No. 96-0356
Application 08/163,635
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connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMRED-IN- PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 96-0356
Application 08/163,635
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