Ex Parte Mindler et al

Board of Patent Appeals and Interferences

Aug 3, 2009

10866932 (B.P.A.I. Aug. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT F. MINDLER, ROBERT C. COHOON,
THEODORE J. SKOMSKY
____________

Appeal 2009-001574
Application 10/866,932
Technology Center 3600
____________

Decided:1 August 3, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Robert F. Mindler et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision finally rejecting claims 1-24. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is a print media stacking tray for
reducing the potential of stubbing or jamming of finished printed sheets
exiting from the printer into the print media stacking tray. Spec. 1:4-8.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A tray for receiving multiple sheets of
printed media emerging from an exit slot of a
printer, the tray comprising:
(a) a print well including a ramp, a first side
wall, and a second side wall, the first side wall and
the second side wall residing in opposing positions
to one another and spaced apart from one another
by at least a width of the sheets exiting the printer;
and
(b) at least one support member for
connecting the tray to the printer and positioning
the tray such that the print well is laterally offset
from the exit slot causing each individual sheet of
printed media exiting from the exit slot to
overhang the first side wall and be partially
supported on a top portion thereof until the
individual sheet of media is released from the
printer, said support member being adapted to
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cause the sheet to fall off of the top portion of the
first side wall into the print well before a next
sheet of printed media exits the exit slot.

THE EVIDENCE
The Examiner relies upon the following evidence:
Parks US 5,188,353 Feb. 23, 1993
Hirakue US 5,686,950 Nov. 11, 1997
Sato US 6,073,925 Jun. 13, 2000
Takeno US 6,464,449 B1 Oct. 15, 2002

THE REJECTIONS
The Appellants seek review of the following decisions by the
Examiner:
1. Rejection of claim 3 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.2
2. Rejection of claims 1-6, 12-16, and 21-24 under 35 U.S.C.
§ 103(a) as unpatentable over Takeno and Sato.3

2 The Examiner rejected claims 1, 2, and 24 under 35 U.S.C. § 112, second
paragraph, for indefiniteness, and rejected claim 3 under 35 U.S.C. § 112,
first paragraph, for failure to comply with the written description
requirement. Final Office Action dated Aug. 27, 2007, at 2. The Examiner
subsequently withdrew the rejection of claims 1, 2, and 24. Ans. 3, 10. The
Examiner maintains the rejection of claim 3 under 35 U.S.C. § 112, first
paragraph. Ans. 2, 11. The Appellants mistakenly list claim 3 in a heading
with claims 1, 2, and 24 as rejected under 35 U.S.C. § 112, second paragraph
in the Grounds of Rejection to be Reviewed on Appeal, but then present
separate arguments rebutting the Examiner’s rejection of claim 3 for lack of
written description. App. Br. 5, 7.
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3. Rejection of claims 7, 8, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Takeno, Sato, and Parks.
4. Rejection of claims 9-11, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Takeno, Sato, and Hirakue.

ISSUES
The Examiner concluded that claim 3 does not comply with the
written description requirement because the originally-filed Specification
does not explicitly recite that the ledge is fixed. Ans. 3-4. More
specifically, the Examiner found the ledge cannot be fixed because: the
ledge is a bendable cantilever beam, the ledge can be broken at the point of
attachment, and a drawing is not a substitute for a full written description.
Ans. 11. The Appellants contend that the ledge is depicted in Figures 9-15
as contiguous with the side wall, and that the possibility that the ledge may
bend or break does not alter the fact the ledge is fixed as claimed. App. Br.
7-8. Based on this, the Appellants argue that the Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
the Appellants were in possession of the invention as now claimed. App.
Br. 8.

3 The Examiner also included claims 7, 8, 17, and 18 in this rejection (Final
Office Action dated Aug. 27, 2007, at 3-5) but subsequently entered a new
ground of rejection of these claims under § 103 in view of Takeno, Sato, and
Parks (Ans. 7-8). The Examiner omitted claims 7, 8, 17, and 18 from the list
of claims rejected under § 103 in view of Taken and Sato in the Answer.
We understand this omission to mean that the Examiner has withdrawn the
final rejection of claims 7, 8, 17, and 18 under § 103 in view of Takeno and
Sato.
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The first issue before us is:
Have the Appellants demonstrated the Examiner erred in concluding
that the Specification fails to meet the written description requirement
because the Specification conveys with reasonable clarity to a person of
ordinary skill in the art that the Appellants were in possession of the claimed
tray having a fixed ledge feature?
The Examiner found that Takeno discloses all the limitations of
claims 1-6, 12-16, and 21-24 except that Takeno does not disclose a printer.
Ans. 4-7. The Examiner found that Sato discloses a similar device having a
printer. Ans. 5. The Examiner concluded it would have been obvious to a
person having ordinary skill in the art at the time of the claimed invention to
modify Takeno to include a printer as taught by Sato. Ans. 5.
The Appellants argue that the Examiner erred in rejecting claim 1
because Takeno does not disclose a tray having a print well that is offset
from the exit slot causing each individual sheet of printed media exiting
from the exit slot to be partially supported on the top portion and to fall off
of the top portion before the next sheet exits the exit slot.4 App. Br. 8-9.
The Appellants do not present any separate arguments for the patentability
of claims 2-6, 14-16, and 21-24. App. Br. 8-11. As such, we select claim 1

4 The Appellants argue for claims 1, 2, and 24 that the references do not
disclose a support member that laterally offsets the print well from the exit
slot, and then for claims 1-3, 21, and 24 the references do not disclose a
support member that causes each sheet to exit and fall as claimed. App. Br.
8-9. Because we select claim 1 as representative for both arguments, and we
interpret claim 1 to require the support member to laterally offset the print
well so that each sheet exits and falls as claimed, there is only one issue
presented by the arguments.
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as the representative claim, and claims 2-6, 14-16, and 21-24 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Appellants additionally argue that the subject matter of claims 12
and 13 is not obvious in view of Takeno and Sato because the positioning
members of Takeno are inserted into guide orifices in the tray, rather than in
the printer as claimed. App. Br. 10-11.
The second and third issues before us are:
Have the Appellants established that the Examiner erred in finding
that Takeno discloses a tray having a print well that is laterally offset from
the exit slot causing each individual sheet of printed media exiting from the
exit slot to be partially supported on the top portion and to fall off of the top
portion before the next sheet exits the exit slot as called for in claim 1?
Have the Appellants established that the Examiner erred in the
decision to reject claims 12 and 13 because the positioning members of
Takeno are inserted into guide orifices in the tray, rather than in the printer
as claimed?
The Examiner found that the combination of Takeno and Sato
discloses all the limitations of the claims 7, 8, 17, and 18, except that Takeno
does not disclose a ledge member that includes a concave and a convex
surface. Ans. 7. The Examiner found that Parks discloses a ledge member
that includes a concave and a convex surface. Ans. 7. The Examiner
concluded it would have been obvious to a person having ordinary skill in
the art at the time of the claimed invention to further modify Takeno to
include a concave and convex surface on the ledge member as taught by
Parks. Ans. 7-8. The Appellants contend the Examiner erred in rejecting
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these claims because the ledge member of Parks does not extend from a top
portion of a first side wall. Reply Br. 2.
The fourth issue before us is:
Have the Appellants established that the Examiner erred in the
decision to reject claims 7, 8, 17, and 18 because the ledge member of Parks
does not extend from a top portion of a first side wall?
The Examiner found that the combination of Takeno and Sato recited
in the previous two rejections discloses all the limitations of the claims 9-11,
19, and 20, except that Takeno does not disclose the claimed two contact
features. Ans. 8-9. The Examiner found that Hirakue discloses the claimed
contact features. Ans. 9. The Examiner concluded it would have been
obvious to a person having ordinary skill in the art at the time of the claimed
invention to further modify Takeno to include the claimed contact features
as taught by Hirakue “for the purpose of elastically holding and releasing the
media.” Ans. 9.
The Appellants contend that the Examiner’s conclusion of
obviousness is based on the incorrect finding of fact that Hirakue’s support
12a and guide post 12c are the claimed contact features. App. Br. 12.
The fifth issue before us is:
Have the Appellants established that the Examiner erred in the
decision to reject claims 9-11, 19, and 20 because Hirakue’s support 12a and
guide post 12c are not contact features?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
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1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellants’ Specification does not explicitly describe the
ledge member as “fixed.” Spec. passim.
2. The Appellants’ Specification does not provide a definition of
“fixed” as used in the claims. Spec. passim.
3. The word “fixed” is commonly understood to mean
“stationary.” Webster’s Third New International
Dictionary, Unabridged (1961).
4. The Appellants’ Specification describes the ledge member as
projecting from first side wall 14, and configured to bias
movement of the printed media exiting the printer and in contact
with the ledge member to fall into the print well. Spec. 2:19-22;
4:13.
5. The Appellants’ Specification describes various embodiments of
the ledge member, with none of the embodiments described as
movable. See e.g., Spec. 4:13-15 and Fig. 9 (ledge member 30);
Spec. 6:1-2 and Fig. 10 (ledge member 48); Spec. 6:7-9 and Fig.
12 (ledge member 58); Spec. 6:9-11 and Fig. 13 (ledge member
62).
6. The Appellants’ Specification depicts various embodiments of
the ledge member, and in each embodiment, the cross hatching in
the cross-sectional views of side wall 14 continue without
interruption through the ledge member. Figs. 9-14.
7. The Appellants’ Specification describes the print well 28 as
comprised of a ramp and at least two side walls, and is the region
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of the receiving tray 10 where the print media exiting the printer
fall. Spec. 2:2-3; 4:10-12; Fig. 1.
8. Takeno discloses a paper collating apparatus that conveys and
stacks sheets 1 to create collated matters 2. Takeno, col. 1, ll. 7-
10; col. 6, ll. 41-44.
9. Takeno discloses the stacker section D is comprised of side
fences 43 and 44 on discharge tray 42, restricting an orthogonal
direction of movement of the collated matters 2. Side fence 43 is
movable horizontally, and side fence 44 is fixed. Each side fence
43, 44 has a discharge wing 47, 48 provided in a notch hole 43a,
44a of side fences 43, 44. Takeno, col. 8, ll. 10-20, 29-31; Fig. 8
(horizontal movement of side fence 43 indicated by arrows at end
of side fence 43); Fig. 9.
10. In normal mode, discharge wings 47, 48 remain in a wait position
(see virtual line, Fig. 9), allowing the collated matters 2 to drop to
the bottom of discharge tray 42 without horizontal displacement.
In sort mode, discharge wings 47, 48 move between the wait
position and an interference position (see solid line in Fig. 9).
When discharge wing 47 of side fence 43 is in the interference
position, it supports the adjacent edge of collated matter 2, and
the opposite edge of collated matter 2 abuts side fence 44 so that
the collated matter is horizontally displaced by a shift amount d1
(right-shift) when the collated matter is deposited onto the
discharge tray 42. When discharge wing 47 returns to the wait
position, the paper falls between the side walls to the tray 42.
Discharge wing 48 of side fence 44 is synchronized to perform
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alternately with discharge wing 47 to shift an amount d1 in the
opposite direction (left-shift). Takeno, col. 8, ll. 37-44; col. 10,
ll. 39-45; col. 10, l. 66 to col. 11, l. 19; Figs. 9, 15A, 15B.
11. The Appellants’ Specification describes support brackets 26
(support members) as adapted to engage the printer to position
the print well 28. Spec. 2:3-5; 4:22-24; Figs. 1, 15.
12. The Appellants’ Specification describes positioning members 66
as adapted to interface with receiving orifices in the printer to
position the receiving tray 10. Spec. 6:27-29; Fig. 16.
13. Parks discloses an apparatus for stacking sheets from a printer.
Parks, col. 1, ll. 24-26.
14. Parks discloses that the device may include tampers to tamp the
side of incoming sheets with a tamping finger, such as tamper 84
with tamping finger 78, positioned in registration wall 82. Parks,
col. 12, ll. 3-5; Fig. 7. Tamping finger 78 is pivotally mounted at
its lower end on pin 122 to pivot from a retracted to an extended
position. Parks, col. 14, ll. 29-30; col. 14, l. 67 to col. 15, l. 1;
Figs. 10, 12A (retracted), 12C (extended). An alternative
embodiment is tamping finger 88 having a curved sheet
contacting face and a plurality of teeth 87. Parks, col. 14, ll. 14-
17; Fig. 9B.
15. Hirakue discloses a discharge/mounting device and recording
apparatus. Hirakue, col. 1, ll. 6-7; Fig. 1. The device includes
elastic guide units 12 for receiving two end portions of the
recording sheets S, mounted on a discharging tray 11. Hirakue,
col. 3, ll. 40-45; Figs. 4, 5. Hirakue discloses that support 12a
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and guide post 12c support elastic member 12b, which guides and
supports the recording sheet S. Hirkue, col. 4, ll. 3-5; Figs. 4, 5.
Hirakue does not disclose that support 12a or guide post 12c
guide or support the recording sheet. Hirakue, passim.

PRINCIPLES OF LAW
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The claimed subject matter need
not be described in haec verba in the specification in order for that
specification to satisfy the description requirement. In re Smith, 481 F.2d
910, 914 (CCPA 1973). “[T]he written description requirement is satisfied
by the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002)
(quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)). In deciding the issue of written description, the specification as
a whole must be considered. In re Wright, 866 F.2d 422, 425 (Fed. Cir.
1989). The PTO has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263 (CCPA 1976).
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The Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon 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).

ANALYSIS
Rejection of claim 3 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement
Claim 3 recites that the device includes “a fixed ledge feature
projecting from one of the side walls away from the print well” and “being
configured to bias movement of each sheet of printed media exiting the
printer.”
In support of the Examiner’s conclusion that claim 3 does not comply
with the written description requirement, the Examiner reasoned that the
ledge member could not be fixed because the ledge member is a bendable
cantilever beam, and the ledge member can be broken at the point of
attachment. Ans. 11. We agree with the Appellants that the possibility that
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the ledge may bend or break is not the proper measure of whether the ledge
member is fixed as claimed. App. Br. 7-8. The proper question is whether
the description conveys with reasonable clarity to a person of ordinary skill
in the art that the Appellants were in possession of the device of claim 3 as
of the time of filing.
We also cannot sustain this rejection based on the Examiner’s
interpretation that a drawing is not a substitute for a full written description.
Ans. 11. First, contrary to the Examiner’s assertion, a drawing alone can
meet the written description requirement. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1565 (Fed. Cir. 1991) (“[U]nder proper circumstances, drawings
alone may provide a ‘written description’ of an invention as required by
§112”).
Second, in this case, there is support for the term “fixed” in more than
just the drawings. While Appellants’ Specification does not define the term
“fixed” and does not explicitly describe the ledge as fixed, the term “fixed”
is commonly understood to mean “stationary,” and the Specification
describes the ledge member as projecting from the side wall (Facts 1-4).
The fact that the ledge member projects from side wall 14 suggests the ledge
member must be attached to, or part of, the side wall. The various
embodiments of the ledge member are not described as movable in any way,
and are depicted as unitary to side wall 14 (Facts 5, 6), suggesting the ledge
is stationary. A person of ordinary skill in the art would understand that the
ledge member is a unitary, non-moving projection of the side wall and
therefore “fixed” in relation to the side wall. This description conveys with
reasonable clarity to a person of ordinary skill in the art that the Appellants
were in possession of the device of claim 3. The Appellants have
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demonstrated the Examiner erred in the decision to reject claim 3 under 35
U.S.C. § 112, first paragraph.

Rejection of claims 1-6, 12-16, and 21-24 under 35 U.S.C. § 103(a) as
unpatentable over Takeno and Sato
Claim 1
The Appellants argue that Takeno’s tray is aligned with the exit slot,
rather than offset as claimed. App. Br. 8. This argument misstates what the
claim requires. Claim 1 recites that the print well, not the tray, must be
laterally offset from the exit slot so that an exiting sheet overhangs the side
wall. The Appellants’ Specification defines the print well as the region of
the tray where printed media exiting the printer falls (Fact 7). In this
context, claim 1 then requires that the area of the tray where printed media
falls from the printer is laterally offset from the exit slot and thus positioned
so that as printed media exits the printer, the printed media is partially
supported on the top portion of the side wall.
Takeno meets this claim limitation. Takeno discloses a paper
collation apparatus with side walls that include discharge wings (Facts 8, 9).
Takeno discloses that in sort mode, discharge wing 47 of side wall 43 is
positioned so that as paper exits the exit slot, the edge of the paper is
partially supported by the top portion of the side wall (Facts 9, 10). When
discharge wing 47 lowers to the wait position, the paper falls to the tray
(Fact 10).
Next, the Appellants contend the combination proposed by the
Examiner refers to stacks of sheets, rather than individual sheets, as claimed,
so that the advantage of non-stubbing would not be met by the reference.
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App. Br. 9. We find this argument unpersuasive as well. First, the
advantage of non-stubbing is not recited in claim 1; rather, what is required
by the claim is that support member is adapted to cause the first sheet to fall
off before the second sheet exits the exit slot. Second, the Examiner
explains that the “stacks” of sheets can consist of one sheet. Ans. 13.
Takeno supports this finding. Takeno discloses a sort mode that can use the
left or right discharge wing to create a left or right shift (Fact 10). Takeno’s
apparatus can then perform a right shift for a first sheet, followed by a left
shift for the second sheet, so that the first sheet falls off the top portion of the
side wall before the second sheet exits the exit slot (Fact 10).
Neither of the Appellants’ arguments demonstrates error in the
Examiner’s decision to reject claim 1. Claims 2-6, 14-16, and 21-24 fall
with claim 1.
Claims 12 and 13
The Examiner found that Takeno discloses the positioning members
(cantilevered rods 63) of claim 12, and the support members (brackets 66) of
claim 13, each inserted into guide orifices (42) in the printer. Ans. 4
(parenthetical nomenclature to Takeno). While the Examiner acknowledges
the guide orifices of Takeno (42) are in the tray of the printer, the Examiner
found that under the broadest reasonable interpretation of claims 12 and 13,
the term “printer” includes the tray. Ans. 13. The issue then is not what
Takeno discloses, but rather whether the tray is part of the printer in claims
12 and 13. The Appellants contend the claims distinguish the printer and the
tray. App. Br. 10-11. We agree.
Claims 12 and 13 contain similar limitations related to the support
members and the positioning members. Claim 1 contains the limitation that
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the support member connects the tray to the printer. Claim 13 depends from
claim 1 and adds the further limitation that the support member is held in
guide orifices in the printer. Claim 2 contains the limitation that the
positioning member extend from the tray to engage the printer. Claims 12
depends from claim 2 and contains the further limitation that the positioning
member is adapted to be inserted into guide orifices in the printer. The
Appellants’ Specification describes the positioning members and support
members as adapted to engage the printer to position the tray (Facts 11, 12).
Based on this description in Appellants’ Specification, we interpret claims
12 and 13 to require the positioning members and support members to
extend from the tray into orifices in the printer in order to position the tray in
relation to the printer. While the Examiner is correct that we must apply the
broadest reasonable interpretation to the claims, it is not reasonable to
consider the tray part of the printer when the claim has distinguished the tray
from the printer.
The Appellants have demonstrated the Examiner erred in the decision
to reject claims 12 and 13.

Rejection of claims 7-8 and 17-18 under 35 U.S.C. § 103(a) as unpatentable
over Takeno, Sato, and Parks
Claims 7, 8, 17, and 18 each contain the limitation, by virtue of their
dependencies from claims 5 and 15, that the ledge member extends from a
top portion of a first side wall.
We agree with the Appellants’ contention that the ledge member of
Parks does not extend from a top portion of a first side wall. Reply Br. 2.
Parks discloses a sheet stacking device for a printer that includes a tamping
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finger in the side wall (Facts 13, 14). The tamping finger extends from the
side wall from a pivot point at the lower end of the finger, in the bottom
portion of the side wall (Fact 14). The Examiner’s conclusion of
obviousness for claims 7, 8, 17, and 18 is based on the incorrect factual
finding that Parks discloses a ledge member that extends from a top portion
of a side wall. The Appellants have demonstrated error in the Examiner’s
decision to reject claims 7, 8, 17, and 18 under 35 U.S.C. § 103.

Rejection of claims 9-11, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Takeno, Sato, and Hirakue
Claims 9-11, 19, and 20 each contain the limitation that device must
have at least two contact features. The Appellants contend that the
Examiner’s conclusion of obviousness is based on an erroneous finding that
Hirakue’s support 12a and guide post 12c are the claimed contact features.
We agree.
Hirakue discloses a discharge/mounting device and recording
apparatus that includes elastic member 12b that contacts sheets entering the
discharge tray (Fact 15). Support 12a and guidepost 12c support elastic
member 12b, but do not contact sheets entering the discharge tray (Fact 15).
Given this, the Examiner’s finding that support 12a and guidepost 12c are
contact features is incorrect. Because the Examiner’s conclusion of
obviousness for claims 9-11, 19, and 20 is based on an erroneous finding of
fact, the Appellants have demonstrated the Examiner erred in rejecting these
claims under 35 U.S.C. § 103.

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CONCLUSIONS
The Appellants have shown the Examiner erred in concluding that
claim 3 fails to meet the written description requirement because the
Specification conveys with reasonable clarity to a person of ordinary skill in
the art that the Appellants were in possession of the claimed tray having a
fixed ledge feature.
The Appellants have failed to show that the Examiner erred in the
decision to reject claim 1-6, 14-16, and 21-24 because Takeno discloses a
tray having a print well that is offset from the exit slot causing each
individual sheet of printed media exiting from the exit slot to be partially
supported on the top portion and to fall off of the top portion before the next
sheet exits and the exit slot as claimed.
The Appellants have shown that the Examiner erred in the decision to
reject claims 12 and 13 because the positioning members of Takeno are
inserted into guide orifices in the tray, rather than in the printer as claimed.
The Appellants have shown that the Examiner erred in the decision to
reject claims 7, 8, 17, and 18 because the ledge member of Parks does not
extend from a top portion of a first side wall as claimed.
The Appellants have shown that the Examiner erred in the decision to
reject claim 9-11, 19, and 20 because the Examiner’s conclusion of
obviousness is based on an erroneous finding that Hirakue’s support 12a and
guide post 12c are the claimed contact members.

DECISION
We reverse the Examiner’s decision to reject claim 3 under 35 U.S.C.
§ 112, first paragraph.
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We reverse the Examiner’s decision to reject claims 7-13 and 17-20
under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision to reject claims 1-6, 14-16, and
21-24 under 35 U.S.C. § 103(a).

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) (2007).

AFFIRMED-IN-PART

vsh

MARK G. BOCCHETTI
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER NY 14650-2201