Ex Parte Ota et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201512234861 (P.T.A.B. Feb. 24, 2015) 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. 12/234,861 09/22/2008 Seiichi Ota 033.0022 4945 124281 7590 02/24/2015 James W. Judge Ooe Building, No. 508 8-1 Nishitemma 2-chome, Kita-ku Osaka-Shi, 530-0047 JAPAN EXAMINER KATCOFF, MATTHEW GORDON ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 02/24/2015 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 SEIICHI OTA, KAZUYUKI KUBOTA, and TAKEHIRO YAMAKAWA ________________ Appeal 2013-000405 Application 12/234,861 1 Technology Center 3700 ________________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and SCOTT A. DANIELS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1‒6. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to improvements in control schemes for controlling bookbinding processes according to sheet-bundle 1 The Examiner states that “12/234860 is a related case with the same applicant and similar subject matter which is also on appeal.” Ans. 3. A Decision in that appeal (i.e., Appeal No. 2012-011826), which reversed the Examiner’s rejection based on art not before us, was mailed Dec. 22, 2014. Appeal 2013-000405 Application 12/234,861 2 thickness.” Spec. ¶ 1. Independent claim 1, reproduced below, is illustrative of the claims on appeal: 1. A bookbinding unit for encasing in coversheets and forming into booklets inner-leaf sheets collated into bundles, the bookbinding unit comprising: an inner-leaf tray on which inner-leaf sheets are set into a bundle; a cover tray on which coversheets are set; a bookbinding process path for transporting sheet bundles from said inner-leaf tray to, in order, an adhesive application location and a cover-binding location; gripping conveyance means for gripping sheet bundles from said inner-leaf tray and transferring them along said bookbinding process path; coversheet conveyance means for feeding coversheets from said cover tray and setting them into place in the cover- binding location; adhesive application means, disposed in the adhesive application location, for applying adhesive to a spine-portion endface of inner-leaf sheets; cover binding means, disposed in the cover-binding location, for binding inner-leaf sheets together with coversheets; and bookbinding operation control means for processing inner-leaf sheets with coversheets to form booklets; wherein a first sheet bundle-thickness detection means is disposed in said inner-leaf tray, for detecting bundle thickness of a bundle of sheets stacked therein; a second sheet bundle-thickness detection means is disposed in said gripping conveyance means, for detecting thickness of a bundle of gripped inner-leaf sheets; and said bookbinding operation control means is configured to prohibit the operation by said gripping conveyance means whereby sheet bundles are conveyed out from said inner-leaf tray, if the thickness of an inner-leaf sheet bundle detected by Appeal 2013-000405 Application 12/234,861 3 said first sheet bundle-thickness detection means is more than a predetermined thickness, and control said adhesive application means and/or coversheet conveyance means based on bundle-thickness information from said second bundle-thickness detection means. REFERENCES RELIED ON BY THE EXAMINER Itoh US 6,685,416 B2 Feb. 3, 2004 Tsukui US 2007/0001362 A1 Jan. 4, 2007 Toyoizumi US 2007/0122256 A1 May 31, 2007 THE REJECTION ON APPEAL Claims 1‒6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsukui, Toyoizumi, and Itoh. Ans. 5. ANALYSIS The Examiner primarily relies on Tsukui for disclosing the limitations of sole independent claim 1, and particularly the limitation directed to prohibiting bundle conveyance from said inner-leaf tray if the bundle thickness is more than a predetermined amount. On this point, the Examiner finds that Tsukui “can prohibit the operation by said gripping conveyance” but fails to otherwise indicate how this might be accomplished or where this is shown and/or discussed in Tsukui. Ans. 6; see also Ans. 8. Appellants contend that Tsukui fails to disclose this limitation. Br. 10. Tsukui discusses an inner-leaf tray and the conveyance of bundles from this tray. See Tsukui generally. Tsukui is directed to correcting bundle posture by the gripping means “while conveying the sheet bundle” or while the bundle is being conveyed to the next station. Tsukui ¶ 16; see also ¶¶ 11, 23, 32, 99. There is no indication in Tsukui that this conveying Appeal 2013-000405 Application 12/234,861 4 operation is interrupted or prohibited if a certain condition occurs as recited in claim 1. Even accounting for Toyoizumi disclosing a bundle-thickness detection means and substituting that for Tsukui’s sheet sensor 303 (see Ans. 6), the Examiner fails to indicate where Toyoizumi might employ bundle thickness data to prohibit the conveyance of the bundle from the inner-leaf tray as claimed. See Toyoizumi ¶ 88; Ans. 6. In other words, the Examiner relies on Tsukui for this teaching but provides no indication as to how Tsukui might be modified so that one skilled in the art would understand how Tsukui “can prohibit the operation by said gripping conveyance” as stated. Ans. 6. Accordingly, we agree with Appellants that “the Examiner's rationale is lacking a proper factual basis, and that therefore there is a clear deficiency in the prima facie case in support of the rejection.” Br. 10. DECISION The Examiner’s decision to reject claims 1‒6 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation