Ex Parte Suzuki et alDownload PDFPatent Trial and Appeal BoardSep 19, 201310575230 (P.T.A.B. Sep. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORIHIRO SUZUKI and MASAYOSHI KAWAI ____________ Appeal 2011-011329 Application 10/575,230 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and BENJAMIN D. M. WOOD, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 2, and 4-7. Ans. 2. The Examiner objected to claim 3 as dependent upon a rejected base claim, but indicated that it would be allowable if rewritten in independent form. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-011329 Application 10/575,230 2 Claimed Subject Matter Claims 1 and 5 are the independent claims on appeal. Claim 5, reproduced below, is illustrative of the subject matter on appeal. 5. A paper supplying device supplying one sheet of paper at a time in an image processing apparatus, comprising: a first pickup roller, located at an end portion of a paper stack, to pick a paper sheet from the paper stack, and to transport the paper sheet into the paper supply apparatus; a second pickup roller, located at a central portion of the paper stack, to assist the first pickup roller to transport the sheet of paper into the paper supply apparatus when the paper stack weighs more than a prescribed weight; and a shutter to prevent contact between the second pickup roller and the paper stack while the paper stack weights [sic] less than the prescribed weight. Rejections The following Examiner’s rejections are before us for review: claims 1, 2, and 4-6 are rejected under 35 U.S.C. § 102(b) as anticipated by Takatoshi (US 5,755,434, issued May, 26, 1998); and claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Takatoshi and Kawano (US 6,247,693 B1, issued Jun. 19, 2001). OPINION Rejection I: Claims 1, 2, and 4-6 as anticipated by Takatoshi Claims 1, 2, 4, and 6 Claim 1 recites “a second pickup roller provided at a central portion of the paper stacked on the paper support base, and selectively assisting the first pickup roller to transport the paper sheet into the bottom removal-type paper supply apparatus.” Br., Clms. App’x. (emphasis added). Appeal 2011-011329 Application 10/575,230 3 The Examiner finds that Takatoshi’s feeding roller 51 corresponds to the claimed “first pickup roller” and Takatoshi’s letting-out roller 21 corresponds to the claimed “second pickup roller.” Ans. 4. As such, letting- out roller 21 must selectively assist feeding roller 51 to correspond to the “second pickup roller” of claim 1. The Appellants contend that the Examiner’s finding is incorrect because “the letting-out roller 21 and the feeding rollers 50,[]51 either work together to transport a bank note (by virtue of the transmission means 53) or are not engaged at all.” Br. 6-7. In other words, Takatoshi does not disclose a “situation in which the feeding roller 50,[]51 are engaged and the letting-out roller is not activated.” Br. 7. As such, Takatoshi does not disclose that “letting-out roller 21 selectively assist[s] the feeding rollers 50,[]51 to transport the bank note.” Id. In response, the Examiner explains the Appellants are using “too narrow a reading of ‘selectively assisting’” and “[t]he mere fact that roller 21 assists in transportation while a sheet is being transported and does not assist when a sheet is not being transported, can also be called selectively assisting.” Ans. 7. We disagree with the Examiner’s construction of the phrase “selectively assisting” because the use of the term “selectively” in the phrase “selectively assisting” of claim 1 denotes a choice, that is, the choice of the second pickup roller to either assist or not assist the first pickup roller in the transportation of a paper sheet. In contrast, although we appreciate that letting-out roller 21 of Takatoshi assists, that is, works together with feeding rollers 50, 51, we do not agree that such assistance is “selective,” as called for by claim 1. Accordingly, the Examiner’s finding is incorrect. Thus, the rejection of claim 1 and its dependent claims 2, 4, and 6 as anticipated by Takatoshi is not sustained. Appeal 2011-011329 Application 10/575,230 4 Claim 5 Claim 5 recites “a shutter to prevent contact between the second pickup roller and the paper stack while the paper stack weights [sic] less than the prescribed weight.” Br., Clms. App’x. (emphasis added). The Examiner finds that Takatoshi’s letting-out roller 21 corresponds to the “second pickup roller” of claim 5. Ans. 4. The Examiner further finds that stoppers 60 correspond to the claimed shutter. Id. See Takatoshi, col. 5, ll. 2-4. The Appellants contend that Takatoshi does not disclose that the weight of the paper stack is a consideration for “whether [or not] the letting-out roller 21 would be allowed by the shutter mechanism to be in contact with the paper stack.” Br. 8. In response, the Examiner explains by example how Takatoshi corresponds to the claimed shutter: Take the example of when a prescribed weight of a stack is five sheets. When a sheet on the bottom of such a stack of five sheets is fed past roller 21, the stack begins to weigh less than the prescribed weight. It is at that moment that the shutter [(stoppers 60)] acts to prevent contact between the second pickup roller 21 and the remaining paper stack. This occurs while the paper stack weighs less than the prescribed weight. Additionally, while the next several sheets are fed, the shutter similarly acts each and every time to prevent contact between the second pickup roller 21 and the remaining paper stack as each sheet passes roller 21. This occurs while the paper stack weighs less than the prescribed weight. Ans. 11 (emphasis added). Accordingly, using the Examiner’s example, if the prescribed weight is five sheets of paper, then at any point there are four or less sheets of paper the shutter (stoppers 60) must prevent contact between the second pickup roller and the paper stack. However, as the Appellants correctly point out, Appeal 2011-011329 Application 10/575,230 5 “no banknote is output unless the letting out roller 21 is in contact with the banknotes stack (see col. 5, lines 13-40).” Br. 8. As such, the paper, i.e., banknotes, come into contact with the letting out roller 21 when there are four or less sheets of paper. Thus, the rejection of claim 5 as anticipated by Takatoshi is not sustained Rejection II: Claims 2 and 7 as unpatentable over Takatoshi and Kawano Claims 2 and 7 depend directly and indirectly, respectively, from claim 1. Br., Clms. App’x. The Examiner’s decision to reject claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Takatoshi in combination with Kawano relies on the erroneous finding described above with regard to claim 1, i.e., that Takatoshi’s letting-out roller 21 corresponds to the claimed “second pickup roller” that selectively assists the first pickup roller. See Ans. 6. Thus, we cannot sustain the rejection of claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Takatoshi and Kawano. DECISION We REVERSE the rejections of claims 1, 2, and 4-7. REVERSED Klh Copy with citationCopy as parenthetical citation