Ex Parte Reeves et al

Board of Patent Appeals and Interferences

Aug 5, 2009

10850542 (B.P.A.I. Aug. 5, 2009)

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
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Decided: August 5, 2009
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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).

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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;
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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
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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.
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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
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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
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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

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