Ex Parte SAITO et al

Patent Trials and Appeals Board

Jul 31, 2018

14319665 - (D) (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/319,665 06/30/2014
32628 7590 08/02/2018
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Takashi SAITO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SIG-169 3842
EXAMINER
CICCHINO, PATRICK D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI SAITO and MINOR! FURIY A
Appeal2017-010771
Application 14/319,665
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Takashi Saito and Minori Furiya (Appellants) 1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1, 3-5, and 23-25. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Nisca Corporation.
Appeal Br. 2.
Appeal2017-010771
Application 14/319,665
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A sheet post-processing apparatus comprising:
a sheet discharge path having a sheet discharge outlet;
a transporter for transporting a sheet along the sheet
discharge path;
a processing tray to perform post-processing on the sheet
transported from the sheet discharge outlet;
a regulation stopper that comes into contact with a rear
end portion in a transport direction of the sheet transported to
the processing tray;
a sheet take-in device for taking in the sheet transported
onto the processing tray toward the regulation stopper;
a first alignment device for aligning the sheet arriving at
the regulation stopper from the sheet discharge outlet, in a
direction orthogonal to the transport direction of the sheet;
a second alignment device disposed on a downstream
side of the first alignment device in the transport direction of
the sheet to align the sheet, which is transported from the sheet
discharge outlet onto the processing tray, in the direction
orthogonal to the transport direction of the sheet;
a sheet post-processing device for performing
predetermined post-processing on the sheet on the processing
tray;
a discharger for discharging the sheet subjected to the
post-processing from the processing tray;
a stack tray that collects the sheet subjected to the post-
processing discharged by the discharger; and
a controller for controlling operation of the first
alignment device and the second alignment device, wherein
when the sheet take-in device performs take-in operation, the
controller causes one of the first alignment device and the
second alignment device to perform preliminary alignment
operation that is alignment with a distance longer than a
dimension in a width direction of the sheet, corresponding to
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Application 14/319,665
size information of the sheet transported to the processing tray
from the sheet discharge outlet.
REJECTIONS
I. Claims 1, 3-5, 23, and 24 stand rejected under 35 U.S.C. § 103
as unpatentable over Watanabe (US 8,651,480 B2, iss. Feb. 18,
2014) and Awano (US 8,720,880 B2, iss. May 13, 2014). 2
II. Claim 25 stands rejected under 35 U.S.C. § 103 as unpatentable
over Watanabe, Awano, and Tamura (US 8,326,208 B2, iss.
Dec. 4, 2012).
DISCUSSION
Rejection I
In rejecting claim 1, the Examiner finds that Watanabe discloses a
sheet post-processing apparatus including, in relevant part, "a first alignment
device ( e.g.[,] lateral end regulating portion, noted in column 6, lines 47---67)
for aligning the sheet arriving at the regulation stopper from the sheet
discharge outlet, in a direction orthogonal to the transport direction of the
sheet" and "a second alignment device ( 1) disposed on a downstream side of
the first alignment device in the direction orthogonal to the transport
direction of the sheet." Final Act. 3. The Examiner also finds that
Watanabe discloses "a controller ( 610) for controlling operation of the first
alignment device and the second alignment device," but "fails to disclose the
2 Although omitted from the statement of the rejection, claims 23 and 24 are
explicitly discussed in the detailed explanation of the rejection, and
Appellants understand that claims 23 and 24 are subject to this rejection.
Final Act 4; see Appeal Br. 6, 10.
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Application 14/319,665
control of the first and second alignment device." Id. However, the
Examiner finds that A wano discloses a
controller caus[ing] one of the first alignment device and the
second alignment device to perform preliminary alignment
operation that is alignment with a distance longer than a
dimension in a width direction of the sheet, corresponding to
size information of the sheet transported to the processing tray
from the sheet discharge outlet (i.e.[,] wherein the alignment
member rests at position Pbx).
Id. The Examiner determines that it would have been obvious to "modif[y]
the device taught by Watanabe with the control of the alignment devices
taught by Awano to achieve the predictable result [ ofJ aligning after a
number of sheets are stacked on the processing tray so as to increase
throughput by not aligning each sheet." Id. at 4.
Appellants argue that "Watanabe fails to disclose ... wherein each of
the first alignment device at the upstream side and the second alignment
device at the downstream side has a function to align the sheet transported to
the processing tray." Appeal Br. 7. In particular, Appellants assert that "the
second alignment device ( aligning member 1) of Watanabe has a function to
align the sheet transported to the stack tray (lower stack tray 137) of
Watanabe, but does not have the function to align the sheet transported to
the processing tray (intermediate process tray 138)." Id. (emphasis omitted)
(citing Watanabe, Fig. 2 and col. 9, 11. 18-39). We are not persuaded by this
argument.
To the extent Appellants argue that Watanabe must disclose that the
second alignment device aligns the sheet as it is transported to the
processing tray or while it is on the processing tray, such an argument is
unpersuasive because it is not commensurate with the scope of claim 1. As
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Application 14/319,665
stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), "the name of the game is the claim." It is well established
that limitations not appearing in the claim cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
claim 1 recites, in pertinent part, "a second alignment device disposed on a
downstream side of the first alignment device in the transport direction of
the sheet to align the sheet, which is transported from the sheet discharge
outlet onto the processing tray, in the direction orthogonal to the transport
direction of the sheet." Appeal Br. 12 (Claims App.). In other words, as
explained by the Examiner, the claim requires that the second alignment
device aligns the sheet, and also requires that the sheet is transported from
the discharge outlet to the processing tray, but the claim does not require
that the second alignment device aligns the sheet as the sheet is discharged
onto the processing tray or as the sheet is on the processing tray. See Ans.
3--4 ( explaining that the claim "does not positively recite that the sheet is on
the processing tray while the second alignment device performs the function
of aligning, but only that a sheet which is transported to the processing tray
is aligned"). The Examiner takes the position that Watanabe meets the
disputed limitation because "all sheets discharged to the claimed stack tray,
as disclosed by Watanabe, are transported from the sheet discharge outlet
onto the processing tray and are further transported, by the claimed
discharger, to the stack tray." 3 Id. at 4. In this regard, Appellants do not
specifically address the Examiner's position or explain why it is deficient.
3 The Examiner reads the claimed stack tray on Watanabe's stack tray 13 7
and the claimed discharger on Watanabe's discharge rollers 130. Final Act.
3; see Watanabe, col. 6, 1. 25; col. 7, 1. 3.
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Appellants argue that Watanabe fails to disclose that "a control device
controls the first and second alignment devices to move one of the first
alignment device at the upstream side and the second alignment device at the
downstream side to the preliminary alignment position based on the size
information of the sheet transported to the processing tray." Appeal Br. 8.
Appellants also argue that "A wano does not disclose ... wherein each of the
first alignment device at the upstream side and the second alignment device
at the downstream side has a function to align the sheet transported to the
processing tray." Id. at 9 ( emphasis omitted). Appellants assert that "one of
the first or second tamper 3 8a, 3 8b of Awano is not disposed on a
downstream side of the other of the first or second tamper 38a, 38b." Id. at 8
(citing Awano, Fig. 3). According to Appellants,
although the control device of Awano controls the second
tamper 3 8b of A wano to move to the preliminary alignment
position based on the size of the sheet for aligning the sheet
discharged to the compilation load section 35, see col. 4, line
47, to col. 5, line 4 of Awano, Awano does not disclose or teach
the second alignment device recited in claim 1.
Id. at 9. We are not persuaded by Appellants' arguments because they attack
the references individually rather than as combined by the Examiner in the
rejection. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)).
As discussed above, the Examiner does not rely on Watanabe for
disclosing the control of the first and second alignment device, and does not
rely on Awano for teaching the alignment devices structure. See Final Act.
3. The Examiner relies on Watanabe for teaching the structure of the first
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alignment device and the second alignment device downstream that aligns a
sheet which is transported to the processing tray. See id.; Ans. 5 ( explaining
that the rejection "does not equate nor imply the alignment device 38a and
3 8b of Awano as either the first or the second alignment device and only
refers to Awano as teaching the claimed control operation of a single
alignment device," and "Awano is not required to teach both a first and
second alignment device since that structure is taught by Watanabe"). The
Examiner explains that on "Awano is used to teach the specific method in
which the claim requires only one of the first and second alignment devices
to be moved to a preliminary alignment position based on size information."
Ans. 4--5. The Examiner determines that, based on the teachings of Awano,
it would have been obvious to modify the sheet post-processing apparatus of
Watanabe to include the claimed control function in order to achieve the
predictable result of increased sheet throughput. See Final Act. 4. In this
regard, Appellants' arguments are not responsive to the rejection as
presented, which is based on the combined teachings of Watanabe and
Awano. Further, Appellants do not specifically address the Examiner's
reasoning articulated in support of the proposed combination or explain why
it is deficient.
For the above reasons, Appellants do not apprise us of error in the
Examiner's determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and its dependent
claims 3-5, 23, and 24, for which Appellants rely on the same arguments
(see Appeal Br. 10), under 35 U.S.C. § 103 as unpatentable over Watanabe
andAwano.
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Rejection II
In contesting the rejection of dependent claim 25 under 35 U.S.C.
§ 103 as unpatentable over Watanabe, Awano, and Tamura, Appellants rely
on the arguments presented for patentability of independent claim 1 subject
to Rejection I. See id. (adding only that "Tamura does not rectify the
deficiencies of Watanabe and Awano"). For the reasons discussed above,
Appellants' arguments do not apprise us of error in Rejection I, and likewise
do not apprise us of error in Rejection II, which we sustain.
DECISION
The Examiner's decision rejecting claims 1, 3-5, and 23-25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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