Ex Parte Ridl et al

Patent Trial and Appeal Board

Jul 20, 2015

12149550 (P.T.A.B. Jul. 20, 2015)

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.
12/149,550 05/05/2008 Paul Ridl 95894EIS 9769
1333 7590 07/20/2015
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
HA, NGUYEN Q
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
07/20/2015 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 PAUL RIDL, ALAN P. JENKS, and BRIAN J. MITTON
____________

Appeal 2013-000700
Application 12/149,5501
Technology Center 2800
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1, 9–11, 18, 19, and 24–
26.2 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 The Appellants state that the real party in interest is Eastman Kodak
Company (Appeal Brief filed April 27, 2012, hereinafter “Br.,” 1).
2 Br. 1 (“[The] Appellants hereby appeal to the Board . . . from the
Examiner’s Final Rejection of claims 1, 9–11, 18, 19 and 24–26 . . . .”); see
also Notice of Appeal filed February 27, 2012 (listing claims 1, 9–11, 18,
19, and 24–26).
Appeal 2013-000700
Application 12/149,550

2
BACKGROUND
The subject matter on appeal relates to a method for controlling a
feeder tray capacity level to any desired level according to a user’s needs,
thus resulting in reduced overall scanning process time and increased
productivity (Specification, hereinafter “Spec.,” ¶ 7). Representative claim
1 is reproduced from page 21 of the Appeal Brief (Claims App’x) as
follows:
1. A method for controlling a feeder tray capacity level
of an automated document feeder, the method comprising the
steps of:
setting the feeder tray capacity level to any desired level
including using a button, key, switch, or dial to move the feeder
tray to said any desired level, wherein said movement of the
feeder tray to said any desired level sets the feeder tray capacity
level; and
automatically positioning the feeder tray of the
automated document feeder thereafter according to the set
feeder tray capacity level.

THE REJECTION
The Examiner rejected claims 1, 9–11, 18, 19, and 24–26 under 35
U.S.C. § 102(b) as anticipated by Westcott et al., (hereinafter “Westcott”)3
(Examiner’s Answer entered July 13, 2012, hereinafter “Ans.,” 3–8)
(referring to Final Office Action entered October 26, 2011, hereinafter
“Final Act.,” 3–9).

3 US 2003/0015836 A1 published January 23, 2003.
Appeal 2013-000700
Application 12/149,550

3
DISCUSSION
Although the Appellants provide arguments for each of claims 1, 10,
19, and 26 under separate headings, the arguments are the same or
substantially the same (Br. 4–20). Accordingly, our discussion below of
claim 1 applies equally to claims 10, 19, and 26. In addition, claims 9, 11,
18, 24, and 25 stand or fall with claim 1 because these claims are not argued
separately pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Westcott describes every limitation of claim
1 (Ans. 3–4; Final Act. 3–4). Specifically, the Examiner found that Westcott
discloses setting a feeder tray level to a desired intermediate position based
on an input, via a control panel, of an expected paper stack size or thickness,
upon which a control circuit causes an intermittent drive to move the tray to
a position corresponding to the expected paper stack size or thickness (Ans.
3).
The Appellants contend that “Westcott nowhere describes setting the
preferred level by actually moving the paper tray to the desired level” (Br.
4). The Appellants further contend that the invention recited in claim 1
provides an advantage over the prior art because, unlike Westcott, “the user
does not need to ‘quantify’ the feeder tray capacity level” but “[r]ather, the
user merely moves the paper tray to the desired level in order to set the
desired level” (id.). According to the Appellants, claim 1 recites a
“preferred hardware option” in which “‘one or more single presses of the
down or up buttons can . . . be used to precisely set the feeder tray capacity
level at the desired setting’” (id. at 5) (quoting from Spec. ¶ 26), whereas
Westcott teaches a “software-only operation,” which is disclosed in the
current Specification as a non-preferred embodiment (id. at 6–7).
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Application 12/149,550

4
The Appellants’ arguments do not persuade us of any reversible error
in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
In this case, claim 1 recites a method “comprising” a step of “setting
the feeder tray capacity level to any desired level including using a button,
key, switch, or dial to move the feeder tray to said any desired level, wherein
said movement of the feeder tray to said any desired level sets the feeder
tray capacity level” followed by an “automatically positioning” step (Br.
21). Nothing in the claim excludes an additional unrecited step, such as a
step of estimating or quantifying the size or thickness of a paper stack. Cf.
In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”). Nor does claim 1 limit the invention to the so-called
“preferred hardware option” described in the Specification (¶ 26), in which
one or more single presses of down or up buttons may be used to provide a
desired setting. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]his
court counsels the PTO to avoid the temptation to limit broad claim terms
solely on the basis of specification passages.”).
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Application 12/149,550

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Giving claim 1 its broadest reasonable interpretation consistent with
the remainder of the Specification, we are in complete agreement with the
Examiner that claim 1 reads on what is disclosed in Westcott (Ans. 7–8).
Westcott, like the Appellants (Spec. ¶¶ 4–6), discloses a technique for
eliminating any wasted time in lowering or raising the tray to accommodate
batches of paper sheets (¶¶ 6, 9). As correctly found by the Examiner (Ans.
3–4), Westcott describes a method in which the user sets, via an operator
control panel (i.e., through a graphical user interface in a PC attached to a
“scanner communications (typically SCSI)”), an intermediate position of the
paper tray best suited for the size of batches of paper to be fed (¶¶ 17, 30).
In addition, Westcott teaches that upon setting an intermediate position, a
control circuit causes an intermittent drive to move the paper support to the
position corresponding to the expected paper stack size—i.e., the
intermediate position (¶ 10). These disclosures in Westcott constitute a
complete description of the “setting” step of claim 1. Furthermore, Westcott
teaches that unless changed by the user or the scanner is powered down, the
tray will return to the intermediate position each time a document stack is
fed from the paper support tray (¶ 31). That disclosure constitutes an
explicit disclosure of the “automatically positioning” step of claim 1.
Therefore, we detect no error in the Examiner’s finding that Westcott
describes every limitation of claim 1.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1, 9–11,
18, 19, and 24–26 as anticipated by Westcott is affirmed.
Appeal 2013-000700
Application 12/149,550

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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