Ex Parte Riccardi

Board of Patent Appeals and Interferences

Mar 24, 2005

09749361 (B.P.A.I. Mar. 24, 2005)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VICTOR RICCARDI
____________
Appeal No. 2005-0722
Application No. 09/749,361
____________
ON BRIEF
____________
Before FRANKFORT, MCQUADE and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Victor Riccardi appeals from the final rejection of claim
13. Claims 4 through 7, 10 through 12 and 14 through 17, the
only other claims pending in the application, stand withdrawn
from consideration.
THE INVENTION
The invention relates to “sheet, envelope, mail and general
flat article or media processing equipment” (specification, page
1). Claim 13 reads as follows:
Appeal No. 2005-0722
Application No. 09/749,361
2
13. A feeding apparatus in a document processing machine
for registering and advancing flat articles, comprising:
an input feeding deck;
a first feeding apparatus on the input feeding deck to feed
an article along a first direction;
a second feeding apparatus provided on the input feeding
deck to feed the article along a second direction oriented
substantially orthogonal to the first direction;
a drive apparatus associated with the first and second
feeding apparatus to continuously drive the article in the first
direction against a registration wall while simultaneously
feeding the article in the second direction.
THE PRIOR ART
The reference relied on by the examiner to support the final
rejection is:
Mylaeus et al., WO 98/28212 July 2, 1998
International Patent
Application (Mylaeus)
THE REJECTION
Claim 13 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Mylaeus.
Attention is directed to the main and reply briefs (filed
June 17, 2004 and October 27, 2004) and the answer (mailed
Appeal No. 2005-0722
Application No. 09/749,361
1 The record contains a copy of U.S. Patent No. 6,267,372 to
Mylaeus et al. which is the U.S. equivalent of the Mylaeus
international application. As the appellant (see page 2 in the
main brief) and the examiner (see page 3 in the answer) have
relied on the U.S. patent as an English language translation of
the international application, we shall do the same. Hence, all
references in this decision to specific portions of the Mylaeus
disclosure will be to the U.S. patent which, it should be noted,
is itself prior art with respect to the appellant’s invention
under 35 U.S.C. § 102(e).
3
September 24, 2004) for the respective positions of the appellant
and the examiner regarding the merits of this rejection.1
DISCUSSION
Mylaeus discloses an apparatus for singling sheets from a
stack 10 disposed on a supporting plate 22. The apparatus
includes a feed device comprising back and front cam wheels 30
and 40 associated with respective driving wheels 31 and 41 and
friction belts 33 and 45 for feeding the bottom sheet 11 in the
stack in a first transport direction T, an aligning device
comprising cam wheels 50 associated with respective driving
wheels 51 and friction belts 55 for feeding the bottom sheet in a
second alignment direction A orthogonal to the first direction
toward a base plate 20, a single cam wheel drive 60 for
continuously driving the cam wheels 30, 40 and 50, and a device
for picking the bottom sheet from the stack when it is properly
aligned against the base plate. Axles 32, 42 and 52 located
Appeal No. 2005-0722
Application No. 09/749,361
4
beneath the supporting plate 22 mount the cam wheels for rotation
such that the entirety of each wheel lies below the supporting
plate during one phase of rotation and a portion of the wheel
extends above the plate through a slot therein during a second
phase of rotation. In operation, “the feed device and the
aligning device act upon the sheet to be picked from the stack at
different times. Said sheet is then transported alternately in
the alignment direction and the transport direction until it
reaches the picking device” (column 1, lines 38 through 42).
Mylaeus teaches that this operational mode results from the
particular relationship between the cam wheels:
[d]riving wheels 31, 41 and 51 of cam wheels 30,
40 and 50 are dimensioned so that firstly the cams of
cam wheels 30 and 40 and secondly the cams of cam
wheels 50 pass through supporting plate 22
simultaneously. The cams of cam wheels 30 and 40
preferably pass through supporting plate 22 with a
constant phase shift in time relative to the cams of
cam wheels 50 so that the cams of cam wheels 30 and 40
of the feed device and the cams of cam wheels 50 of the
aligning device act alternatingly at least upon sheet
11 to be picked from stack 10.
. . .
Through the action of friction belts 33 and 45
laid around cam wheels 30 and 40 upon passage of the
cams through supporting plate 22, at least sheet 11 to
be picked from stack 10 is first transported a certain
distance in the transport direction. The cams of cam
wheels 30 and 40 then pass through supporting plate 22
again so that friction belts 33 and 45 no longer
interact with sheet 11. Parallel thereto the cams of
cam wheels 50 pass through supporting plate 22 so that
friction belts 55 act at least upon sheet 11 of stack
Appeal No. 2005-0722
Application No. 09/749,361
5
10 and transport it in the direction of a defined stop
which is formed here by base plate 20 [column 3, lines
4 through 35].
In rejecting claim 13 as being anticipated by Mylaeus, the
examiner views the supporting plate 22, cam wheels and associated
friction belts 30 and 33, cam wheels and associated friction
belts 50 and 55, and common drive 60 disclosed in the reference
to meet the limitations in the claim relating to the input
feeding deck, first feeding apparatus, second feeding apparatus
and drive apparatus, respectively (see page 3 in the answer). In
response to the appellant’s argument that the Mylaeus drive 60
does not meet the recitation in the claim requiring the drive
apparatus “to continuously drive the article in the first
direction . . . while simultaneously feeding the article in the
second direction,” the examiner submits that
[w]hile column 3, lines 4-12 [of Mylaeus] state that
the cam wheels 30 and 50 preferably pass through the
feeding deck 22 to contact the sheet alternatingly, it
should be noted that alternatives to this embodiment
are clearly contemplated and fairly suggested to one of
ordinary skill in the art because this is only a
preference. The only alternative to this preference is
that the cam wheels 30 and 50 contact the sheet
simultaneously for at least part of their operating
cycle. Furthermore, lines 4-12 also state that the cam
wheels 30 and 50 act alternatingly at least upon the
sheet 11 to be picked from the stack. That statement
fairly suggests to one of ordinary skill in the art
that the sheets already picked from the stack may be
acted upon simultaneously because it means that the
preference for alternating action of the cam wheels 30
Appeal No. 2005-0722
Application No. 09/749,361
6
and 50 only applies to at least the sheet being picked
from the stack and not to the sheets already removed
from the stack. These statements mean that the
reference discloses or fairly suggests to one of
ordinary skill in the art that one of the contemplated
embodiments of the document processing machine of the
PCT document [i.e., the Mylaeus international
application] has a drive apparatus associated with the
first and second feeding apparatuses to continuously
drive the article in the first direction against the
registration wall 20 while simultaneously feeding the
article in the second direction for at least part of
their operating cycle [answer, pages 3 and 4].
The examiner’s position here is completely untenable. To
begin with, the question of whether a reference would have
suggested a claimed invention is not germane to the issue of
anticipation. Anticipation lies only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In the present case, Mylaeus does not
disclose, either expressly or inherently, an article feeding
apparatus comprising a drive apparatus “to continuously drive the
article in the first direction . . . while simultaneously feeding
the article in the second direction” as recited in claim 13. The
examiner’s determination that the Mylaeus drive 60 continuously
drives an article (sheet 11) in a first direction (transport
Appeal No. 2005-0722
Application No. 09/749,361
7
direction T) while simultaneously feeding the article in a second
direction (alignment direction A) stems from an unreasonable
interpretation of the reference text reproduced above.
Considered in context, the word “preferably” refers not to the
alternating passage of cam wheels 30 and 50 through plate 22 as
asserted by the examiner, but rather to the manner in which such
alternating passage is accomplished. In a similar vein, the
examiner’s conjecture as to the import of the statement in the
reference that the wheels of the feed and aligning devices act
alternatingly “at least” upon the sheet to be picked from the
stack has no factual basis. The Mylaeus reference, reasonably
read, discloses that drive 60 functions via cam wheels 30, 40 and
50 to drive sheet 11 in orthogonal transport and alignment
directions only in an alternating manner.
Hence, the finding by the examiner that Mylaeus meets the
drive apparatus limitations in claim 13 is unfounded and actually
belied by the fair teachings of the reference. Therefore, we
shall not sustain the standing 35 U.S.C. § 102(b) rejection of
claim 13 as being anticipated by Mylaeus.
Appeal No. 2005-0722
Application No. 09/749,361
8
SUMMARY
The decision of the examiner to reject claim 13 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2005-0722
Application No. 09/749,361
9
PITNEY BOWES, INC.
INTELLECTUAL PROPERTY
AND TECHNOLOGY LAW DEPT.
35 WATERVIEW DRIVE
P.O. BOX 3000
SHELTON, CT 06484