Ex Parte Reeves et alDownload PDFBoard of Patent Appeals and InterferencesAug 5, 200910850542 (B.P.A.I. Aug. 5, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT JAMES DOUGLAS REEVES, MARK SPARANO, GIOVANNI FORTE, and MARTYN MITCHELL ____________________ Appeal 2009-001784 Application 10/850,542 Technology Center 3600 ____________________ Decided: August 5, 2009 ____________________ Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert James Douglas Reeves et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-001784 Application 10/850,542 2 SUMMARY OF THE DECISION We REVERSE. THE INVENTION Appellants’ claimed invention pertains to an automated finishing apparatus, such as a stapling or binding apparatus, as would be used in a mid- or high-volume printer or copier. Spec. 1, ¶ [0001]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An apparatus for collating sheets, comprising: a main surface, for contact with a bottom sheet of a stack of sheets, and a stop, for contacting an edge of the stack of sheets; at least one finger, the finger defining a main surface for substantially parallel contact with a top sheet of the stack of sheets; and the finger being movably mounted on a mount, the mount being movable relative to the stack to maintain substantially parallel contact of the finger with a top sheet of the stack of sheets, as the stack of sheets increases, the substantially parallel contact of the finger being sufficiently large in area to prevent buckling of the stack of sheets. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Hutson US 6,065,748 May 23, 2000 Saito US 6,412,774 B1 July 2, 2002 The following Examiner’s rejections are before us for review: 1. Claims 1-8 and 17 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hutson; Appeal 2009-001784 Application 10/850,542 3 2. Claims 1, 8-12, and 14-17 are rejected under 35 U.S.C. § 102(b) as being anticipated by Saito; and 3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Saito and Hutson. ISSUES The Examiner found that both Hutson and Saito disclose a finger that is substantially parallel with the top sheet of the stack. Ans. 5-6. Appellants contend that neither reference shows a configuration that maintains substantially parallel contact of the finger with the top sheet of a stack as the stack height increases. App. Br. 7; Reply Br. 3, 4. Therefore, the issue on appeal is: Have Appellants shown that the Examiner erred in finding that Hutson and Saito anticipate claim 1 because those references do not disclose a configuration to maintain substantially parallel contact of the finger with the top sheet? PRINCIPLES OF LAW During examination of a patent application, pending claims are interpreted broadly, see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), but the construction cannot be “beyond that which was reasonable in light of the totality of the written description,” In re Baker Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior Appeal 2009-001784 Application 10/850,542 4 art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations omitted). ANALYSIS The claim language The sole independent claim on appeal, claim 1, recites: “the finger being movably mounted on a mount, the mount being movable relative to the stack to maintain substantially parallel contact of the finger with a top sheet of the stack of sheets, as the stack of sheets increases.” Appellants’ Specification explains that, by maintaining substantially parallel contact, the weight of the finger is distributed around a reasonably large area regardless of the size of the stack. Spec. 4, ¶ [0016]; see also Claim 1 (“the substantially parallel contact of the finger being sufficiently large in area to prevent buckling of the stack of sheets.”). “Substantially” is often construed in patent claims as largely but not wholly that which is specified. See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572- 73 (Fed. Cir. 1996); see also Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996) (construing “substantially vertical,” in light of the intrinsic evidence, as meaning the same as or very close to vertical, and as referring to a deviation only slightly, if at all, from vertical). In this case, the modifier “substantially” indicates that the finger and mount must be configured so as to maintain a finger-to-sheet relationship that is very close to parallel. This understanding is consistent with Appellants’ Specification. For example, Appellants’ Figure 1 depicts an embodiment in which the contact surface of the finger appears to be either parallel to the top sheet or very close thereto. Appeal 2009-001784 Application 10/850,542 5 The rejection of claims 1-8 and 17 under 35 U.S.C. § 102(b) as being anticipated by Hutson The Examiner found that Hutson’s articulated arm tip J corresponds to Appellants’ claimed finger. Ans. 3; see Hutson, col. 3, ll. 28-30, fig. 4C. The Examiner also found that “[t]he finger of Hutson, as shown in at least figure 5, is considerably parallel to the top sheet in the stack ….” Ans. 5. Hutson’s figure 5, however, depicts several fingers (arm tips) at various angles relative to top sheets. Thus, it is unclear as to which finger has been found to be considerably parallel, or whether the Examiner found all of the depicted fingers to be considerably parallel. It appears to us that most, if not all, of the finger-to-sheet angles in Hutson’s figure 5 deviate more than slightly from parallel. Further, it appears that the angle between Hutson’s finger and the top sheet varies greatly as the stack height changes such that the weight of the finger is, at certain stack heights, distributed around a relatively small contact area (e.g., the finger shown as a solid line in pocket P-1 in figure 5). Thus, we cannot find by a preponderance of the evidence that Hutson discloses a finger and mount arrangement configured to maintain substantially parallel contact of the finger with the top sheet as the stack increases. Accordingly, we are constrained to reverse the rejection of claim 1 as anticipated by Hutson, and the rejection of claims 2-8 and 14, which depend from claim 1. The rejection of claims 1, 8-12, and 14-17 under 35 U.S.C. § 102(b) as being anticipated by Saito The Examiner found that “as shown in [Saito’s] figure 5, finger 31 appears to be in substantially parallel contact with the sheet as shown by the Appeal 2009-001784 Application 10/850,542 6 marking made by Appellant (page 6 of the Brief).” Ans. 6. Saito’s figure 5 depicts the element 31 in two positions, and Appellants have marked both, App. Br. 6. So it is again unclear as to which finger position was found to be substantially parallel, or if both positions were found to be substantially parallel. Additionally, Saito’s rotatable base end portion 31a (which the Examiner found to be the recited mount, Ans. 4) is a portion of first sheet presser 31 (finger) and appears to be rigidly attached to the remaining portions of the sheet presser, thereby precluding movement between a mount and a finger. See Saito, col. 8, ll. 53-56; fig. 5. Even if the Examiner found that the finger in the upper position (or, alternatively, the fingertip 31b in the lower position) is substantially parallel with the top sheet, it seems that Saito’s configuration does not allow for that substantially parallel relationship to be maintained as the stack height changes. We conclude that the Examiner has not made a prima facie showing of anticipation by Saito, and we reverse that rejection of claims 1, 8-12, and 14-17. The rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Saito and Hutson Claim 13 depends indirectly from claim 1, and thus also requires a finger and mount configured so as to maintain substantially parallel contact between the finger and a top sheet. In rejecting claim 13 as obvious, the Examiner found that Saito discloses all of the limitations of claim 13 except for the “means for rotating the axle.” Ans. 4. The Examiner relies on Hutson only for the disclosure of a rotating means. Id. As the Examiner has not shown that Saito discloses all of the limitations of independent claim 1 and the Examiner does not articulate an obviousness rejection that cures the Appeal 2009-001784 Application 10/850,542 7 deficiency discussed above, we cannot sustain the rejection of claim 13 under § 103. CONCLUSIONS Appellants have shown that the Examiner erred in finding that Hutson and Saito anticipate claim 1 because the Examiner has not demonstrated that those references disclose a configuration to maintain substantially parallel contact of the finger with the top sheet. DECISION The decision of the Examiner to reject claims 1-17 is reversed. REVERSED LV Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 Copy with citationCopy as parenthetical citation