Ex Parte Mandel

Board of Patent Appeals and Interferences

Jan 11, 2011

11411651 (B.P.A.I. Jan. 11, 2011)

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

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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
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Application 11/411,651

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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).
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Application 11/411,651

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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
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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
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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.
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Application 11/411,651

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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.
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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
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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.
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Application 11/411,651

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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
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