Ex Parte MandelDownload PDFBoard of Patent Appeals and InterferencesJan 11, 201111411651 (B.P.A.I. Jan. 11, 2011) Copy Citation 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. 11/411,651 04/26/2006 Barry P. Mandel 2005 1609 US NP 6905 70537 7590 01/11/2011 Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 EXAMINER MORRISON, THOMAS A ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 01/11/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BARRY P. MANDEL ____________ Appeal 2009-011127 Application 11/411,651 Technology Center 3600 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN STAICOVICI, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011127 Application 11/411,651 2 STATEMENT OF THE CASE Barry P. Mandel (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 16-18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention is “a high speed sheet path gating system that can be used to selectively divert even rapidly moving closely spaced apart flimsy print media sheets into a selected one of separate plural sheet paths without sheet damage or an expensive high-powered gate actuator.” Spec. 1, para. [0001]. Claim 16, reproduced below, is representative of the subject matter on appeal. 16. A moving print media sheets path selection system comprising a print media sheets input path and at least first and second different print media sheet output paths and a print media sheets gating system for directing selected said moving print media sheets into a selected one of said at least first and second different print media sheet output paths, wherein said print media sheets gating system has a repositionable gate repositionable by a gate actuating system between at least a first gate position directing said print media sheets into said first print media sheet output path and a second gate position directing said print media sheets into said second print media sheet output path, wherein; said repositionable gate has a compliant outer sheet engaging tip portion and said repositionable gate other than said tip comprises a rigid finger pivotly driven by said gate actuating system; said gate actuating system is connected to said repositionable gate for actuating said repositionable gate while Appeal 2009-011127 Application 11/411,651 3 a print media sheet is still in said print media sheets gating system and before said print media sheet has passed said compliant outer sheet engaging tip portion of said repositionable gate so that said repositionable gate may be at least partially repositioned between said first and second gate positions while said print media sheet is still partially in said print media sheets gating system with said print media sheet being slidably engaged with a force by said compliant outer sheet engaging tip portion of said repositionable gate, said tip portion being flexible relative to a remainder of said repositionable gate, and wherein said tip portion is hinge- connected with a spring loading to said remainder of said repositionable gate. THE REJECTIONS Appellant seeks review of the following rejections: 1. The Examiner rejected claims 16-18 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.2 2 Appellant does not contest the indefiniteness rejection. See App. Br. 8 (where Appellant notes that he intended to fix the informalities that form the basis of the indefiniteness rejection). Appellant asserts he attempted to fix the informalities noted in the indefiniteness rejection by an after-final amendment adding new claim 19. The Examiner, however, refused entry of this amendment after final. As such, proposed new claim 19 is not before us on appeal. Seeing no arguments from Appellant contesting the propriety of the Examiner’s indefiniteness rejection, we summarily sustain the rejection of claims 16-18 under 35 U.S.C. § 112, second paragraph. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Appeal 2009-011127 Application 11/411,651 4 2. The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Ishii (JP 63-147761 A; published June 20, 1988) in view of Nakazato (JP 05-278918 A; published October 26, 1993). 3. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Ishii, Nakazato, and Komatsu (JP 62-167165A; published July 23, 1987). CONTENTION AND ISSUE Appellant contends the Examiner erred in rejecting claims 16-18 as being unpatentable under 35 U.S.C. § 103(a) because none of the cited references discloses “a repositionable gate with only a compliant tip portion and the remainder of the gate a rigid portion” or “a compliant tip portion hinge-connected with a spring loading to the rigid remainder of the gate.” App. Br. 10-12. The Examiner found that Ishii discloses a moving print media sheets path selection system including a “repositionable gate (including 27, 53, 55 and 66) [which] has a compliant outer sheet engaging tip portion (53) and said repositionable gate other than said tip (53) comprises a rigid finger (including 27) pivotly driven by said gate actuating system . . . .” Ans. 5, see also Ans. 7. The Examiner further found that Ishii’s “tip portion (53) is hinge-connected with a spring (66) loading to said remainder of said repositionable gate (including 27, 55 and 66).” Id. The Examiner further explained that “the tip portion (53) of [Ishii] is arranged to deflect, and Appeal 2009-011127 Application 11/411,651 5 therefore, can be considered a ‘compliant outer sheet engaging tip portion’, as claimed.” Ans. 12. See also Ans. 13. The issue before us is whether Ishii discloses a repositionable gate with a compliant outer sheet engaging tip portion and the repositionable gate other than the tip comprising a rigid finger pivotally driven by said gate actuating system and wherein said tip portion is hinge-connected with a spring loading to said remainder of said repositionable gate. ANALYSIS We begin our analysis by interpreting the claimed “compliant outer sheet engaging tip portion” of claim 16 and the “compliant tip” of claim 18. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but by giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Appellant’s Specification describes three embodiments. See Spec. figs. 1 and 2 (first embodiment), fig. 3 (second embodiment), and figs. 7 and 8 (third embodiment). Because the claims on appeal call for the tip portion to be hinge-connected with a spring loading to the remainder of the repositionable gate, and because the first and third embodiments show a repositionable gate lacking such a hinge connection, Appellant appears to be claiming only the second embodiment, as shown in Figure 3. See Amended App. Br., dated March 17, 2009 (submitting revised Summary of the Claims Appeal 2009-011127 Application 11/411,651 6 and Subject Matter, which identifies the claimed subject matter as corresponding to the embodiment of Figure 3). Appellant’s Specification describes, “In the embodiment of Fig. 3, its print media sheets gating system 30 has a repositionable gate 32 with springs 34 loaded tip 32A to provide a compliant tip.” Spec. 10, para. [0021]. In other words, Figure 3 “shows an alternate gate tip configuration utilizing a lightly sprung gate tip 32A.” Id. Figure 3 appears to show tip portion 32A separate from and hingedly- connected to the remainder of repositionable gate 32 and being loaded by spring 34. As such, Appellant’s Specification describes that the tip of this second embodiment is made “compliant” by hingedly-connecting the tip portion to the remainder of the repositionable gate with spring loading.3 We agree with the Examiner’s findings that Ishii discloses a repositionable gate with a compliant tip portion and a rigid finger and with the compliant tip portion hinge-connected with a spring loading to the rigid finger. See Ans. 5, 7, and 12 (finding that because tip portion (53) of Ishii is 3 To the extent Appellant is arguing that the claim language “compliant” requires a tip made of a material that is less rigid than the remainder of the gate, we do not find this interpretation to be consistent with the language of the claims or with Appellant’s description of the “compliant tip” in the Specification as set forth above. Independent claims 16 and 18 each contain a separate limitation calling for the tip portion to be “flexible” relative to a remainder of the repositionable gate. As such, one having ordinary skill in the art would not understand “compliant” tip as used in Appellant’s claims and as described in Appellant’s Specification to equate to the flexibility of the material used to form the tip portion of the repositionable gate as compared to the remainder of the gate. Appeal 2009-011127 Application 11/411,651 7 arranged to deflect, it can be considered a compliant outer sheet engaging tip portion). Ishii discloses “a sheet transportation path allocation device in possession of an allocation mechanism which exerts no damages on a transfer sheet even if said transfer sheet is partially pinched in-between said mechanism & a guide panel and is capable of abbreviating the copying time on a continuous copying occasion.” Ishii 5.4 In particular, Ishii’s allocation mechanism is a deflector 27, which is divided into a proximal end unit-side component 52 axially support by a main rotary axle 51, and a free end unit- side component 53 rotatably interfaced via an auxiliary rotary axle 55 with proximal end unit-side component 52. Ishii 9; fig. 4. Ishii describes, with reference to the embodiment of Figure 4, that “a biasing mechanism is instead provided by coiling, as a coil spring (66), a twisted coil spring around each auxiliary rotary axle (55) supporting the free end unit-side component (53)” and that “the recovery force of this coil spring (66) is designated in such a way that it can be resisted by the so-called ‘resiliency’ of transfer sheets (P).” Ishii 12. Ishii describes the function of the invention as follows: In a case where a transfer sheet becomes pinched in- between a guide panel configured for guiding the transportation of a transfer sheet and the aforementioned allocation mechanism the aforementioned proximal end unit-side component may become slightly rotated in relation to the device mainframe in opposition to the biasing force of the 4 All citations to Ishii are to the English language translation, translated by Schreiber Translations, Inc., February 2008, document PTO 08-2459. Appeal 2009-011127 Application 11/411,651 8 aforementioned biasing mechanism, or the aforementioned free end unit-side component may instead become likewise rotated in relation to the proximal end unit-side component. Ishii 7. See also Ishii, fig. 2 (showing the free end unit-side component rotated in relation to the proximal end unit-side component). Based on these disclosures in Ishii, we find that Ishii’s deflector 27 is a repositionable gate having a compliant outer sheet engaging tip portion 53, which is hinge- connected via auxiliary rotary axle 55 with a spring loading via coil spring 66 to the remainder (rigid finger) 52 of Ishii’s deflector 27, as called for in claims 16 and 18. As noted supra, claims 16 and 18 also call for the tip portion to be flexible relative to the remainder of the gate or rigid finger. The Examiner found that Ishii does not explicitly disclose that the tip portion 53 is flexible relative to a remainder of the repositionable gate or rigid finger. Ans. 6, 8. The Examiner relied on Nakazato to teach that it is well known to use a repositionable gate having a tip portion that is flexible relative to a remainder of the repositionable gate. Id. Appellant argues that the gate of Nakazato is made entirely of a flexible material, so that Nakazato does not disclose a tip portion that is flexible relative to the remainder of the gate. App. Br. 10; Reply Br. 9. This argument, however, does not respond to the Examiner’s proposed modification of only the tip portion of Ishii’s gate to render it flexible, as taught by Nakazato. “To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. The test for obviousness is not whether the features of a secondary reference Appeal 2009-011127 Application 11/411,651 9 may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted). The Examiner found that one of ordinary skill in the art would recognize that only the tip portion 53 of Ishii’s deflector 27 pinches the sheet during switching of the gate, and thus one would have been led to modify only the tip portion 53 to make it flexible relative to the remainder of the gate, as taught in Nakazato. Ans. 14-15. As such, the combined teachings would result in a compliant tip portion 53 of Ishii’s deflector 27 that is flexible as compared to the remainder 52 of Ishii’s deflector. We find the Examiner’s proposed modification to be reasonable in light of the teachings of the prior art and adopt it as our own. Appellant has not contested the Examiner’s articulated reasoning for the proposed modification. As such, we affirm the rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Ishii and Nakazato and the rejection of claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Ishii, Nakazato, and Komatsu. CONCLUSION Ishii discloses a repositionable gate with a compliant outer sheet engaging tip portion and the repositionable gate other than the tip comprising a rigid finger pivotally driven by said gate actuating system and wherein said tip portion is hinge-connected with a spring loading to said remainder of said repositionable gate. Appeal 2009-011127 Application 11/411,651 10 DECISION The decision of the Examiner to reject claims 16-18 under 35 U.S.C. § 112, second paragraph, is AFFIRMED. The decision of the Examiner to reject claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Ishii and Nakazato is AFFIRMED. The decision of the Examiner to reject claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Ishii, Nakazato, and Komatsu is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 Copy with citationCopy as parenthetical citation