Ex Parte Tomatsu

Board of Patent Appeals and Interferences

Nov 18, 2002

09028449 (B.P.A.I. Nov. 18, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOSHIYA TOMATSU
____________
Appeal No. 2001-1610
Application No. 09/028,449
____________
HEARD: October 09, 2002
____________
Before HAIRSTON, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 32, which are all of the claims
pending in this application.
Appellant's invention relates to an image forming apparatus,
or printer, with an improved feed mechanism. Claim 26 is
illustrative of the claimed invention, and it reads as follows:
26. An image forming apparatus, comprising:
a sensitive body on which a toner image is formed;
a transfer device, disposed opposite to the sensitive body,
that transfers the toner image to a sheet;
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Application No. 09/028,449
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a transfer device cover which covers the transfer device,
the cover including a downstream portion on which the sheet is
fed from the transfer device; and
a plurality of first guide members disposed at the
downstream portion of the transfer device cover.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Tsuchiya et al. (Tsuchiya) 5,477,314 Dec. 19, 1995
Asada et al. (Asada) 5,584,475 Dec. 17, 1996
Claims 2 through 32 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Asada in view of Tsuchiya.
Reference is made to the Examiner's Answer (Paper No. 14,
mailed September 12, 2000) for the examiner's complete reasoning
in support of the rejections, and to appellant's Brief (Paper No.
13, filed June 26, 2000) and Reply Brief (Paper No. 16, filed
November 13, 2000) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 2 through 32.
We turn first to independent claim 26, which appears to be
the broadest claim. Claim 26 requires, in pertinent part, first
guide members "disposed at the downstream portion of the transfer
device cover." The examiner (Answer, pages 3-4) refers to the
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element above Asada's transfer roller 8 as the cover and the tip
of that element as a guide member. The examiner, however,
recognizes (Answer, page 4) that Asada fails to teach a plurality
of guide members and, thus, turns to Tsuchiya. Tsuchiya,
according to the examiner (Answer, page 4), teaches plural guide
members at element 38. The examiner concludes (Answer, page 4)
that it would have been obvious to use plural guide members in
Asada's device because it "would have allowed the sheet separated
from the surface of the sensitive body to be conveyed smoothly
and reliably along a path," one of the objectives of Tsuchiya's
invention.
As pointed out by appellant (Brief, page 14), Tsuchiya
teaches (column 8, lines 48-50) that the purpose of ribs 38 is to
allow the paper to convey smoothly "without coming into contact
with the grounding plate member 30 through the openings 40."
Asada has no such grounding plate member nor openings through
which the paper would come in contact with the grounding plate
member on or around the cover to the transfer roller. Therefore,
we find no motivation in the references to combine the ribs of
Tsuchiya with the transfer device cover in Asada. Consequently,
we cannot affirm the rejection of claim 26 nor of its dependents,
claims 2 through 15, 27, and 28.
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Application No. 09/028,449
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Claim 29 also recites plural guide members, but "at the case
adjacent to the outlet," wherein the case "accommodates the
photosensitive member and the transfer member." For the claimed
case, the examiner relies upon "the case surrounded by the letter
28, 10, 21, 22, 13, 6, 4 of fig. 1" which he admits (Answer, page
7) fails to include plural guide members. Again the examiner
turns to the disclosure of Tsuchiya. Similar to above, Asada
fails to include a grounding plate member and openings through
which the paper would come in contact with the grounding plate
member at the claimed location (which for claim 29 would be at
the case adjacent the outlet). Therefore, we cannot sustain the
rejection of claim 29 nor of its dependents, claims 30 through
32.
Lastly, independent claim 16 requires two sets of guide
members with one set being offset from the other set. The
examiner relies upon Asada's cover above element 8 for one
guiding device and the upper cover surface 13 of the entry port
for the second guiding device. Again the examiner (Answer, page
11) admits that Asada fails to disclose plural guide members for
each guiding device and, thus, turns to Tsuchiya. As stated
supra, we find no motivation in the references to combine the
ribs of Tsuchiya with Asada's transfer device cover (which the
examiner relies upon for the first guiding device). We find the
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Application No. 09/028,449
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same problem with the examiner's proposed modification of cover
surface 13, the alleged second guiding device. With no teaching
of plural guide members for each of the guiding devices, the
references clearly cannot teach or suggest the offset between the
first and second guiding devices. Therefore, the examiner has
failed to meet each and every element of and, thus, to establish
a prima facie case of obviousness for claim 16 and its
dependents, claims 17 through 25. Consequently, we cannot
sustain the rejection of claims 16 through 25.
CONCLUSION
The decision of the examiner rejecting claims 2 through 32
under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
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apg/vsh
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