Ex Parte Azzopardi et al

Board of Patent Appeals and Interferences

Feb 13, 2009

11125869 (B.P.A.I. Feb. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH AZZOPARDI and JOHN F. LOMBARDO
____________________

Appeal 2008-4568
Application 11/125,869
Technology Center 3600
____________________

Decided:1 February 13, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4568
Application 11/125,869

2
STATEMENT OF THE CASE
Joseph Azzopardi and John F. Lombardo (Appellants) seek our review
under 35 U.S.C. § 134 from the final rejection of claims 14-18. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to a sheet stacking tray for a
reproduction apparatus, such as a printer or copier. (See Spec. 1, ¶ [0001];
5, ¶ [0008]). Appellants’ tray utilizes proximity sensors to determine
whether the stack guides are appropriately positioned relative to the stack so
as to facilitate proper stack alignment and sheet feeding. (Spec. 6, ¶ [0014].)
Claim 14, reproduced below with paragraphing added, is representative of
the subject matter on appeal.
14. A sheet stacking tray in a reproduction apparatus, said
tray useful for stacking print media sheets of different sheet
stack dimensions in at least one sheet stacking area for feeding
said sheets from said stack with a sheet feeder, said sheet
stacking tray comprising
at least one manually repositionable sheet stack edge
guide repositionable to provide an edge guide for at least one
side of said sheet stack for said different particular sheet stack
dimensions,
there is provided an electronic stack edge guide
positioning confirmation system with a repositionable sheet
stack edge proximity sensing system that is automatically
repositionable with said at least one repositionable sheet stack
edge guide,
Appeal 2008-4568
Application 11/125,869

3
said electronic stack edge guide repositioning
confirmation system providing with said repositionable sheet
stack edge proximity sensing system an automatic warning
signal against the feeding of said sheets from said stack with
said sheet feeder if said sheet stack edge guide has not been
positioned close to said at least one side of said sheet stack
stacked into said sheet stacking tray
said warning signal activated when at least one side guide
is positioned more than 3 mm away from one side of said sheet
stack and
wherein said electronic stack edge guide repositioning
confirmation system is adapted to provide electrical information
indicative of said at least one side guide being positioned
closely adjacent to said at least one side of said sheet stack in
said sheet stacking tray when said at least one side guide is
positioned within 2 mm of said one side of said sheet stack.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Miller US 3,907,283 Sept. 23, 1975
Muramatsu US 4,908,673 March 13, 1990
The following rejections are before us for review:
1. Claims 14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muramatsu;
2. Claims 15 and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muramatsu and Miller.
In the Final Rejection, the Examiner rejected claim 18 under
35 U.S.C. § 103(a) as being unpatentable over Muramatsu. (Final Rej. 2.)
In the Answer, the Examiner included, as a new ground, the rejection of
claim 18 as obvious over Muramatsu and Miller. (Ans. 2.) The Examiner
Appeal 2008-4568
Application 11/125,869

4
no longer identifies claim 18 as rejected as obvious over solely Muramatsu
(Ans. 3), and we treat that rejection as withdrawn. Appellants responded to
the new ground of rejection in the Reply Brief. (See Reply Br. 3, 11-12.)

ISSUES
The issues before us are whether the Appellants have shown that the
Examiner erred in rejecting claims 14, 16, and 17 as obvious over
Muramatsu; and whether the Appellants have shown that the Examiner erred
in rejecting claims 15 and 18 as obvious over Muramatsu and Miller.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Muramatsu discloses a paper refeed tray for a copier.
(Muramatsu, col. 1, ll. 8-10.) The refeed tray temporarily holds sheets
during duplex or composite copying operations. (Id., col. 1, ll. 16-20.)
After the first image is formed on one side of the paper, the sheet is held in
the refeed tray prior to being refed through the copier for the formation of a
second image on the paper. (Id., col. 1, ll. 16-24.)
2. Muramatsu teaches side regulator plates 62 and 63 that have
contact detection sensors 381 and 382 for detecting contact with paper in the
tray. (Muramatsu, col. 9, ll. 16-20.) These sensors are triggered by the
movement of flap-like plates 152 located on the inner walls of the side
regulator plates. (Id., col. 9, ll. 20-28; Fig. 5.) A motor moves the side
regulator plates towards and away from the sheet. (Id., col. 8, ll. 52-58;
Fig. 5.) Muramatsu further teaches a computerized system that controls the
Appeal 2008-4568
Application 11/125,869

5
regulator motors based on feedback from the sensors. (See Muramatsu, col.
10, ll. 9-25.)
3. In Muramatsu’s device, when the regulator plates are moving
inward and the sheet is not centered, one regulator plate contacts the sheet
first but both regulator plates continue moving. (Muramatsu, col. 9,
ll. 36-41.) Inward regulator plate movement is stopped when both plates
contact the sheet. (Id., col. 9, ll. 41-43.) In this manner, the regulator plates
center the sheet in the tray. (Id., col. 9, ll. 43-45.)
4. Muramatsu’s regulator plates, when in contact with the sheet,
are within 1 mm and within 2 mm of the side of the sheet.
5. Miller discloses a sheet tray having a sheet sensing device that
engages the bottom sheet in a stack. (Miller, col. 1, ll. 61-65.) Miller
teaches that, when the last sheet is fed from the tray, the device actuates a
microswitch which causes an alarm signal indicating that the paper tray is
empty. (Miller, col. 3, ll. 5-41; see also App. Br. 7 (Appellants conceding
that Miller’s sensor would “tell the user when the last sheet in the tray is
used.” (Citations and emphasis omitted)).)
6. The prior art of record indicates that the person of ordinary skill
in the art of paper feeding has a high level of skill. (See, e.g., Muramatsu,
Figs. 5, 10-16.)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
Appeal 2008-4568
Application 11/125,869

6
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Court pointed out that “the principles laid down in Graham
reaffirmed the ‘functional approach’ of Hotchkiss [v. Greenwood], 11 How.
248 [(1851)].” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (citing
Graham, 383 U.S. at 12). The Court reiterated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at ___, 127 S. Ct. at
1739. The Court also noted that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at ___, 127 S. Ct. at 1740 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). The Court explained:
Appeal 2008-4568
Application 11/125,869

7
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at ___, 127 S. Ct. at 1740. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at ___,
127 S. Ct. at 1740.
In In re Aller, 220 F.2d 454, 456 (CCPA 1955), the Court of Customs
and Patent Appeals “set out the rule that the discovery of an optimum value
of a variable in a known process is normally obvious.” In re Antonie, 559
F.2d 618, 620 (CCPA 1977); see also In re Boesch, 617 F.2d 272, 276
(CCPA 1980). Exceptions to this general rule include situations where the
parameter optimized was not recognized to be a result effective variable, In
re Antonie, 559 F.2d at 621, and where the results of optimizing a variable,
which was known to be result effective, were unexpectedly good,
In re Waymouth, 499 F.2d 1273, 1276 (CCPA 1974).

ANALYSIS
The Rejection of Claims 14, 16, and 17 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Muramatsu
Appellants contend that claim 14 is patentable over Muramatsu
because Muramatsu does not teach “[a] critical problem indicator if the side
guide is positioned more than 3 mm away from one side of the sheet stack,”
Appeal 2008-4568
Application 11/125,869

8
or “[a] critical measurement of within 2 mm of one side of said sheet stack
to convey proper positioning.” (App. Br. 6.) The Examiner concluded that
it would have been obvious to provide a warning signal at a distance of
3 mm and to provide the recited “electrical information” when the guide is
within 2 mm. (Ans. 3-4.) Although Muramatsu does not specifically
mention these dimensions, we nonetheless find that the selection of the
guide-to-stack gap settings involves only routine optimization by the person
of ordinary skill in the art. “This accords with the rule that discovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art.” In re Boesch, 617 F.2d at 276 (citations omitted);
see also KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1742 (“When there is a
design need … and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.”). The person of ordinary skill in
the paper feeding arts would have understood the need to position the guides
close enough to the stack to properly align the sheets while also allowing
enough clearance to avoid impeding the sheet feeding. This ordinary artisan
would also have known how to determine, by routine experimentation, the
appropriate distances at which to initiate a warning signal or to indicate that
the guide is closely adjacent to the stack. Appellants do not offer persuasive
argument or evidence that the claim’s recited dimensions produce
unexpectedly good results. Therefore, Appellants have not shown error in
the Examiner’s conclusion that it would have been obvious to provide a
warning signal when a guide is positioned more than 3mm away from the
stack and electrical information when the guide is within 2 mm of the stack.
Appeal 2008-4568
Application 11/125,869

9
Appellants argue that Muramatsu does not teach “the use of a stack
loading sensor as required in claim 14.” (App. Br. 5 (emphasis omitted).)
Appellants suggest that this sensor indicates the position of the stack edge
guide. (Id.; Reply Br. 13.) However, the Specification describes this stack
loading sensor as signaling that a stack of sheets has been loaded into the
tray, not as indicating the guide position. (Spec. ¶ [0006] (as amended July
27, 2007).) Claim 14 does not recite or require a stack load sensor. Thus,
we are not persuaded by Appellants’ argument that the stack loading sensor
is a distinguishing feature of claim 14.
Appellants also assert that “[t]he presence of the warning signal of
Applicant’s invention continues throughout the stacking and does not stop
with the first sheet alignment.” (App. Br. 6.) Appellants argue that
“Muramatsu teaches away from this requirement[.]” (Id.) The Appellants’
argument is not commensurate in scope with claim 14, which does not
require that the warning signal continue throughout the stacking process.
Appellants have not shown that the Examiner erred in rejecting claim
14 as unpatentable over Muramatsu.
Regarding claim 16, Appellants argue that Muramatsu does not teach
a sensing system providing electrical information when a guide is within
1 mm of the stack. (App. Br. 7.) As discussed above, the selection of the
guide-to-stack gap settings involves only routine optimization by the person
of ordinary skill in the art. Further, Muramatsu’s contact detection sensor
provides an electrical signal when the side regulator plates are in contact
with the stack, and, thus when the distance between the plate and stack is
less than 1 mm. (Facts 2-4.) Appellants have not persuaded us that the
Examiner erred in rejecting claim 16 as obvious over Muramatsu.
Appeal 2008-4568
Application 11/125,869

10
For claim 17, Appellants reiterate their argument that Muramatsu does
not disclose a sensor providing an operator error signal when a guide is
positioned more than 3 mm from the stack. (App. Br. 8.) We have
addressed this argument above in the context of claim 14, and found the
argument unpersuasive.

The Rejection of Claims 15 and 18 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Muramatsu and Miller
Dependent claims 15 and 18 recite “a separate stack loading sensor.”
Appellants appear to argue that the combined references would not teach the
claimed invention because Miller lacks this sensor (App. Br. 7), and that
Miller is not physically combinable with Muramatsu (id. (quoting MPEP
§ 2145)). Appellants’ arguments are premised on the erroneous assumption
that the recited stack loading sensor is the same as the stack guide position
sensor. (See App. Br. 7.) Both claims 15 and 18 recite a stack loading
sensor that is separate from the sensor indicating guide positioning. This
separate stack loading sensor provides a signal indicating that sheets are
loaded into the tray, not the guide position relative to the stack. (See claims
15, 18; Spec. ¶ [0006] (as amended July 27, 2007).) Contrary to Appellants’
apparent understanding, the Examiner did not propose Miller’s stack loading
sensor as a substitute for Muramatsu’s guide position sensors (Ans. 7-8).
Rather, the respective prior art sensors are combined to arrive at the claimed
subject matter. (See Ans. 2-3, 4.) Miller discloses a stack loading sensor
which engages the bottom of the stack. (Fact 5.) Muramatsu teaches a tray
having sensors mounted on the side regulator plates. (Fact 2.) Appellants
have not persuasively articulated why Miller’s sensor could not be combined
with Muramatsu’s tray.
Appeal 2008-4568
Application 11/125,869

11
Appellants also argue that neither cited reference nor their
combination shows the “critical” guide-to-stack distances. (App. Br. 7;
Reply Br. 11.) We have addressed this argument above in the context of the
rejection of independent claims 14 and 16 as obvious over Muramatsu alone,
and found it unpersuasive. The selection of the recited values for these
result effective variables would have been obvious to one of ordinary skill in
the art.
Appellants have not shown that the Examiner erred in rejecting claims
15 and 18 as obvious over Muramatsu and Miller.

CONCLUSIONS
We conclude that the Appellants have failed to show that the
Examiner erred in rejecting claims 14, 16, and 17 under 35 U.S.C. § 103(a)
as unpatentable over Muramatsu; and in rejecting claims 15 and 18 under 35
U.S.C. § 103(a) as unpatentable over Muramatsu and Miller.

DECISION
The decision of the Examiner to reject claims 14-18 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)(1)(iv) (2007).

AFFIRMED
Appeal 2008-4568
Application 11/125,869

12
hh

JAMES J. RALABATE
5792 MAIN ST.
WILLIAMSVILLE, NY 14221