Ex parte Luffel et al.

Board of Patent Appeals and Interferences

Jan 25, 2002

08641442 (B.P.A.I. Jan. 25, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT W. LUFFEL, PAUL COFFIN, and DANIEL R. DAUNER
____________
Appeal No. 1999-2278
Application No. 08/641,442
____________
ON BRIEF
____________
Before FLEMING, DIXON, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-10, which are all
of the claims pending in this application. An amendment
(Paper No. 11, filed April 9, 1998) submitted subsequent to
the final rejection was denied entry by the examiner (Paper
No. 13, mailed April 17, 1998). However, the examiner states
(id.) that appellants' response has overcome the rejections
under 35 U.S.C. § 112, first and second paragraphs. The
examiner additionally states (answer, page 3) that the
Appeal No. 1999-2278 Page 2
Application No. 08/641,442
Appellants state (brief, page 2) that the amendment to claim 10 is1
assumed to have been entered in view of the examiner's withdrawal of the
rejection of claim 10 under 35 U.S.C. § 112, second paragraph. As to whether
or not the amendment to claim 10 has been entered, or whether the examiner
determined that claim 10 was definite without the amendment, we consider to be
a formal matter to be resolved by the examiner and appellants subsequent to
this appeal. We do not address this rejection of claim 10 under 35 U.S.C.
§ 112, second paragraph in this decision.
rejection of claims 3-7 has been withdrawn. Appellants
assert (brief, page 2) that the rejection of claim 9 is not
being appealed because the proposed amendment to claim 9 has
not been entered by the examiner. Appellants additionally
assert (id.) that claim 10 is allowable if written in
independent form because claim 10 was only rejected under 35
U.S.C. § 112, second paragraph, and that this rejection has
been withdrawn by the examiner . 1
We observe that the only claims rejected by the examiner
in the answer are claims 1, 2, and 8, which stand rejected
under 35 U.S.C. § 102(b). In sum, the rejection of claims 3-7
and 10 has been withdrawn by the examiner, the appeal is
dismissed as to claim 9, and rejected claims 1, 2, and 8
remain before us for decision on appeal.
BACKGROUND
Appeal No. 1999-2278 Page 3
Application No. 08/641,442
Appellant's invention relates to a picker for handling
data cartridges. An understanding of the invention can be
derived from a reading of exemplary claims 1 and 8, which are
reproduced as follows:
1. A picker for extracting a data cartridge from a
storage location, comprising:
a sleeve;
a thumb, adapted for movement relative to the sleeve;
a finger mounted on the thumb;
a post on the finger;
a first track in the sleeve, the first track adapted to
receive the post, wherein when the post is in the first track
the finger is positioned to grip the data cartridge;
a second track in the sleeve, the second track adapted to
receive the post, wherein when the post is in the second
track, the finger is positioned to release the data cartridge;
and
a gate, spring loaded between the first track and the
second track, wherein when the post is in the first track and
the thumb is moved to a first predetermined position, the post
deflects the gate, enabling the post to move past the gate
into the second track, even when no data cartridge is being
gripped.
8. A picker for extracting a data cartridge from a drive
mechanism, the drive mechanism including a handle, the picker
comprising:
a thumb having a first extension and a second extension;
Appeal No. 1999-2278 Page 4
Application No. 08/641,442
wherein when the thumb is positioned so that the handle
is between the first extension and the second extension, the
thumb is moved in a first direction causing the first
extension to contact the handle and to move the handle from an
unlatched position to a latched position or the thumb is moved
in a second direction causing the second extension to contact
the handle and to move the handle from the latched position to
the unlatched position.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Wanger et al. (Wanger) 5,014,255 May 7, 1991
Claims 1, 2, and 8 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Wanger.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and appellants regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 17, mailed November 24, 1998) for the examiner's complete
reasoning in support of the rejection, and to appellants'
brief (Paper No. 16, filed August 19, 1998) and reply brief
(Paper No. 18, filed February 1, 1999) for appellants'
arguments thereagainst. Only those arguments actually made by
appellants have been considered in this decision. Arguments
Appeal No. 1999-2278 Page 5
Application No. 08/641,442
which appellants could have made but chose not to make in the
briefs have not been considered. See 37 CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have
carefully considered the subject matter on appeal, the
rejection advanced by the examiner, and the evidence of
anticipation relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellants' arguments
set forth in the briefs along with the examiner's rationale in
support of the rejection and arguments in rebuttal set forth
in the examiner's answer.
Upon consideration of the record before us, we reverse,
for the reasons set forth by appellants.
To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Appellants note (brief, page 10), at the outset, that as
Appeal No. 1999-2278 Page 6
Application No. 08/641,442
discussed in appellants' specification, Wanger discloses a
two-fingered picker in which the state of the pickers is
changed from a gripping state to a splayed state only if a
cartridge is present. Appellants' specification states that
the improvement over Wanger is that the state of the gripper
can be changed from a gripping state to a splayed state
without requiring a cartridge to be present (specification,
pages 11 and 12). Appellants specification states (id.) that
Wanger does not disclose "enabling the post to move past the
gate into the second track, even when no data cartridge is
being gripped" as required by claim 1. The examiner's
position (answer, pages 3 and 5) is that this limitation is
met by Wanger, and that Wanger discloses that the post is
deflected by the gate (col. 7, lines 39-45;
col. 8, line 67 to col. 9, line 31, and figures 8-10).
Appellants disagree with the examiner's interpretation of
Wanger (brief, pages 10-14), and note (id., page 14) that
claim 1 does not recite that the gate deflects the post, but
rather that the post deflects the gate.
From our review of Wanger, we are in agreement with
appellants, for the reasons set forth in the brief (pages 10-
Appeal No. 1999-2278 Page 7
Application No. 08/641,442
14) that Wagner does not disclose that "the post deflects the
gate, enabling the post to move past the gate into the second
track, even when no data cartridge is being gripped" as
required by claim 1. In Wanger, four operating modes: "go-
get;" "retrieve;" "put," and "return" are discussed. Wanger
discloses (col. 3, lines 39-49) that:
The cartridge engaging means has a “go-get”
operating mode, FIGS. 8-12, wherein the engaging
means 18 moves forwardly 24 without a cartridge in
engagement therewith; a “retrieve” operating mode,
FIGS. 12, 13 and 1, wherein said engaging means 18
moves rearwardly 26 with an engaged cartridge; a
“put” operating mode. FIGS. 14 and 15, wherein said
engaging means moves forwardly 24 with an engaged
cartridge; and a “return” operating mode, FIGS. 15,
6, and 14, wherein the engaging means 18 moves
rearwardly without a cartridge in engagement
therewith.
The only mode in which the gate is deflected by the post is
the "retrieve" mode, where lower stud 88 moves along a lower
stud path 312 including channel portion 164, gate surfaces
192, 194, channel portion 156, as shown in figure 13 (col. 9,
lines 32-43). However, in the "retrieve mode," the cartridge
is gripped. In the "go-get" mode and the "return" mode, the
cartridge is not gripped. However, the post does not deflect
the gate in either of these modes. In the "go-get" mode, the
Appeal No. 1999-2278 Page 8
Application No. 08/641,442
lower stud 88 of latch member 74 moves along a first path 310
including channel portions 152, 154, and 164, as best shown in
figures 10 (col. 9, lines 12-14). In the "go-get" mode, the
gate is not deflected by the stud. In the "return" mode,
lower stud 88 follows path 316 including channel portion 160,
gate surface portion 196, channel portion 156, as best shown
in figure 14 (col. 9, lines 60-64). In the "return" mode, the
lower stud 88 goes past surface 196 of the gate, but does not
deflect the gate and move from channel 154 to channel 156.
The post 88 is already in channel 160 and is moving past
surface 196 of the gate as post 88 moves to channel 156.
Thus, the gate surface 196 deflects the post 88, and is not
deflected by the post as required by claim 1. We have
reviewed the portions of Wanger relied upon by the examiner,
but we find no teaching of post 88 deflecting the gate and
moving from the first channel to the second channel when no
cartridge is being gripped.
Accordingly, we find that Wanger does not anticipate
claim 1 as advanced by the examiner. The rejection of claim
1, and claim 2 which depends therefrom, is therefore reversed.
Appeal No. 1999-2278 Page 9
Application No. 08/641,442
We turn next to independent claim 8. Appellants note
(brief, page 16) that "[c]laim 8 specifies that the picker has
a thumb with first and second extensions suitable for
manipulating a handle on a drive from a latched position to an
unlatched position and vice-versa." Appellants assert (id.)
that figure 2 of Wagner illustrates a picker positioned
relative to a storage location, but that Wanger does "not
discuss drives or drive handles, much less manipulation of a
drive handle with the picker."
The examiner's position (final rejection, pages 7 and 8)
is that Wanger discloses in figures 10 and 11, two extension
portions located between numeral 74 and handle 18, and that
Wanger discloses that the extension portions contact the
handle 18 whenever the handle is moved. Appellants assert
(brief, page 16) that in Wanger, reference numeral 18 refers
to the picker engaging assembly, and that numeral 74 refers to
one of the two fingers mounted on the picker engaging
assembly. Appellants argue (id.) that in "claim 8, the drive
handle is not part of the picker. The drive handle is a
separate item being manipulated by the picker."
Appeal No. 1999-2278 Page 10
Application No. 08/641,442
Claim 8 recites "A picker for extracting a data cartridge
from a drive mechanism, the drive mechanism including a
handle, the picker comprising: . . .." We find that claim 8
is drawn to a picker. The handle assembly is not part of the
picker, but rather is part of a drive mechanism which includes
a data cartridge, which is extracted by the picker. We do not
agree with the examiner that numeral 18 of Wanger can be
construed as a handle of a drive mechanism, because reference
numeral 18 of Wanger represents the cartridge engaging
assembly (col. 3, lines 31 and 32) which includes latch
members or picker fingers 72, 74 (col. 3, line 59). Since the
cartridge engaging assembly includes the picker fingers, it
cannot be construed as a handle of a drive mechanism from
which the cartridge is extracted by the picker. In addition,
claim 8 further recites that:
the thumb is moved in a first direction causing the
first extension to contact the handle and to move
the handle from an unlatched position to a latched
position or the thumb is moved in a second direction
causing the second extension to contact the handle
and to move the handle from the latched position to
the unlatched position.
The examiner states that the extension portions contact the
handle 18 whenever the handle is moved. However, the examiner
Appeal No. 1999-2278 Page 11
Application No. 08/641,442
points to no showing in Wanger, and we are not aware of any
teaching, of the thumb moving in a first direction to contact
the handle and move the handle from an unlatched position to a
latched position, and vice versa. We therefore find that the
examiner has failed to establish a prima facie case of
anticipation of claim 8 by Wanger. Accordingly, the rejection
of claim 8 under 35 U.S.C. § 102(b) is reversed.
Appeal No. 1999-2278 Page 12
Application No. 08/641,442
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, and 8 under 35 U.S.C. § 102(b) is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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Appeal No. 1999-2278 Page 13
Application No. 08/641,442
IP ADMINISTRATION
HEWLETT-PACKARD COMPANY
LEGAL DEPARTMENT 20BO
P.O. BOX 10301
PALO ALTO, CA 94303-0890
APPEAL NO. 1999-2278 - JUDGE LEVY
APPLICATION NO. 08/641,442
APJ LEVY
APJ DIXON
APJ FLEMING
DECISION: REVERSED
Prepared By: GJH
DRAFT TYPED: 20 Aug 02
FINAL TYPED: