Ex Parte Ng et al

Patent Trial and Appeal Board

Apr 11, 2013

11742563 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENG LEONG NG, THADDIE NATALARAY,
KYI THU MAUNG, TOH TUNG WONG,
WAYNE E. FOOTE, and JEFFREY C. MADSEN
____________

Appeal 2011-003264
Application 11/742,563
Technology Center 3600
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Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 12-21, 23-25, 28, and 32-34 under 35 U.S.C. § 102(b) as being
anticipated by Hamada (US 2004/0253030 A1; pub. Dec. 16, 2004). App.
Br. 5. Claims 1-11, 22, 30, and 31 are cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
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Application 11/742,563

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CLAIMED SUBJECT MATTER
Claims 12 and 19 are independent. Claim 12 is reproduced below:
12. A sheet feeding apparatus, comprising:
a supply tray for holding media sheets;
an output tray;
a pickup unit configured to pull a media sheet from
the supply tray and feed the media sheet to a scanning
region in a media path;
opposing de-skew rollers positioned at a beginning
of the media path and configured to de-skew the media
sheet when the media sheet enters the media path;
opposing pre-scan rollers positioned along said
media path upstream from the scanning region;
opposing post-scan rollers positioned along said
media path downstream from the scanning region;
opposing output rollers positioned at an end of the
media path; and
a switch-back path extending from the output
rollers to the de-skew rollers and configured to guide the
media sheet back into the media path,
wherein the pickup unit, the de-skew rollers, the
pre-scan rollers, the post-scan rollers, and the output
rollers cooperate to provide, separately, a high
throughput mode, a delay mode, and a duplex mode of
the sheet feeding apparatus,
wherein, in the high throughput mode, the pre-scan
rollers contact a trailing end of a previous media sheet as
the de-skew rollers contact a leading end of a subsequent
media sheet.

ANALYSIS
Regarding claim 12, the Examiner found that Hamada discloses a
supply tray 202, output tray 203, pickup unit 207, a scanning region 232,
opposing de-skew rollers 208, opposing pre-scan rollers 209, opposing post-
scan rollers 210, opposing output rollers 212, switch-back path 234, and a
Appeal 2011-003264
Application 11/742,563

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high throughput mode, delay mode, and duplex mode (para. [0108] and S1-
S5). Ans. 3-4, 5-6. Regarding claim 19, the Examiner found that Hamada
discloses a supply tray 202, output tray 203, pickup unit 207, pick roller 204,
feed roller 213, opposing de-skew rollers 208, opposing output rollers 212,
switch-back path 234, drive system M1, M2, high throughput mode, delay
mode, and duplex mode (para. [0108], S1-S5). Ans. 4, 5-6. The Examiner
found that there is no physical or structural distinction between the claimed
apparatus and Hamada and the claimed high throughput mode, delay mode,
and duplex mode are an intended operation of the sheet feeding apparatus to
the material worked upon and are not given patentable weight for apparatus
claims. Ans. 3, 4, 5-6 (citing MPEP 2115).
Appellants argue that claims 12 and 19 recite certain features of the
sheet feeding apparatus in functional terms by describing how pre-scan and
de-skew rollers operate in a high throughput mode (claim 12) and how a
supply tray and pick roller operate in a high throughput mode (claim 19). In
particular, Appellants argue that claim 12 recites how the pre-scan rollers
contact a trailing end of a previous sheet as the de-skew rollers contact a
leading end of a subsequent media sheet and claim 19 recites how the supply
tray and pick roller allow a media sheet to be pulled from the supply tray as
soon as a trailing edge of a previous media sheet passes the pick roller.
Reply Br. 3-4. Appellants argue that these functional features distinguish
the claimed sheet feeders over Hamada and are not a mere intended use of
the claimed sheet feeders with a particular sheet media. See App. Br. 11-14
(citing para. [0108]). Appellants contend that a patent applicant can recite
features of an apparatus structurally or functionally and patentable weight
must be given to all claim limitations including functional language. Reply
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Application 11/742,563

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Br. 4 (citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) and
MPEP 2173.05(g)). We agree. The Examiner has not addressed these
arguments or shown by a preponderance of evidence that Hamada discloses
these functional features or is capable of performing these functions. We do
not sustain the rejection of claims 12-21, 23-25, 28, and 32-34.

DECISION
We REVERSE the rejection of claims 12-21, 23-25, 28, and 32-34.

REVERSED

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