Ex Parte Moore

Patent Trial and Appeal Board

Dec 14, 2012

11514276 (P.T.A.B. Dec. 14, 2012)

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.
11/514,276 09/01/2006 Lee Coy Moore XX0603D [20052315] 6702
70537 7590 12/14/2012
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
PHAM, ANDY L
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
12/14/2012 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 PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte LEE COY MOORE
_____________

Appeal 2010-006748
Application 11/514,276
Technology Center 2800
______________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS and HUNG H. BUI,
Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
Appeal 2010-006748
Application 11/514,276

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claim 32.

We affirm.
INVENTION
The invention is directed a system to provide proper alignment of an
image of an original document on an image scanner. See pages 3 and 4 of
Appellant’s Specification. Claim 32 is representative of the invention and
reproduced below:
32. An electrostatic copy system comprising an image
exposure station, said image exposure station comprising:
a platen glass in said image exposure station, and
alignment members selected from the group consisting of
alignment marks on said platen and flood lamps or lights
positioned above and below said platen,
said flood lamps configured to illuminate an original
document and said platen with said substrate alignment marks
both from below and above said platen sufficient to show a
back lit image on said original document placed on said platen,
wherein said alignment members are configured to align
said document and permit a proper copying alignment of said
image on said original document to be transferred to and
reproduced on a receiving surface, and provide an image that is
squared with said original document,
said flood lamps that are positioned above and below said
platen glass are configured with said alignment marks to align
said original document that is placed upon said platen glass,
said alignment marks on said platen providing a grid configured
to align said document,
said flood lamps configured to illuminate said platen
glass from both above and below the platen glass during
scanning of said platen glass and said original document.

Appeal 2010-006748
Application 11/514,276

3

REJECTION AT ISSUE
The Examiner has rejected claim 32 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Answer 3-4.1
The Examiner has rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Batten (US 6,614,563 B1) in view of Wu (2005/0094216
A1). Answer 4-6.

ISSUES
Rejection under 35 U.S.C. § 112
Appellant argues on pages 6 and 7 of the Appeal Brief that the
Examiner’s rejection under 35 U.S.C. § 112 is in error.2 These arguments
present us with the issue: did the Examiner err in finding that the originally
filed disclosure does not provide support for both flood lights and alignment
marks being used together?

Rejection under 35 U.S.C. § 103(a)
Appellant argues on pages 7 through 9 of the Appeal Brief that the
Examiner’s rejection under 35 U.S.C. § 103(a) is in error. These arguments
present us with the issues:
a) Did the Examiner err in finding that Batten teaches illuminating
the documents during scanning from both above and below?

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
March 16, 2010.
2 Throughout this opinion we refer to Appellants’ Appeal Brief filed on
February 1, 2010, and Reply Brief filed on March 24, 2010.
Appeal 2010-006748
Application 11/514,276

4

b) Did the Examiner err in finding that the combination of Batten and
Wu teaches using both the flood lights above and below the
alignment marks?
ANALYSIS
Rejection under 35 U.S.C. § 112
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments. We agree with Appellant’s
conclusion that the Examiner erred in finding that the originally filed
disclosure does not provide support for both flood lights and alignment
marks being used together. The written description requirement “serves
both to satisfy the inventor’s obligation to disclose the technologic
knowledge upon which the patent is based, and to demonstrate that the
patentee was in possession of the invention that is claimed.” Capon v.
Eshhar 418 F. 3d 1349, 1357 (Fed Cir. 2005). Appellant has identified
several citations in the originally filed disclosure which state that “platen
glass together with at least one member selected ….” Brief 7 (citing
Specification page 6 and 7). We consider this to suggest to a skilled artisan
that Appellant possessed using one or more elements of the list, thus
demonstrating possession of using flood lights and alignment marks
together. Accordingly, we will not sustain the Examiner’s rejection of claim
32 under 35 U.S.C. § 112.

Appeal 2010-006748
Application 11/514,276

5

Rejection under 35 U.S.C. § 103(a)
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments.
We disagree with Appellant’s conclusion that the Examiner erred in
finding that Batten teaches illuminating the documents from above and
below during scanning and that the Examiner erred in finding that Batten
and Wu disclose using both flood lights and alignment marks. App. Br. 7-9.
The Examiner has provided a comprehensive response, supported by ample
evidence, to each issue raised by Appellant. Answer 6-8. As noted, by the
Examiner, Appellant’s arguments are not commensurate with the scope of
the claim, and the art teaches all of the argued limitations. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner and sustain the
Examiner’s rejection under 35 U.S.C. § 103(a).

DECISION
We do not sustain the Examiner’s rejection of claim 32 under 35
U.S.C. § 112.
We sustain the Examiner’s rejection of claim 32 under 35 U.S.C.
§ 103(a)
Appeal 2010-006748
Application 11/514,276

6

ORDER
The decision of the Examiner to reject claim 32 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)(1)(iv)(2011).

AFFIRMED

ELD